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In re Giacomini, 102(e) & Provisional Patent Applications

By: Jared T. Olson

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion, In re Giacomini, Case No.: 2009-1400 (Fed. Cir., July 7, 2010). In this case, the Board of Patent Appeals and Interferences (the Board) had rejected several claims of a patent application filed by Giacomini et al., U.S. Patent Application No. 09/725,737 (Giacomini, at 2). The rejection was brought under 35 U.S.C. § 102(e) in light of what the court referred as the Tran patent, U.S. Patent No. 7,039,683 (Id.).

The Giacomini application claimed a caching system where a cache was populated with a given resource after a specified number of requests for the resource were received (Id., at 3). The Tran patent disclosed a caching technique based on an anticipated demand for dated and past requests for access to the same or related information (Id.). However, since Giacomini did not dispute that the Tran patent describes the invention claimed in Giacomini’s patent application, the central issue at the Board was the eligibility of the Tran patent to serve as prior art under 35 U.S.C. § 102(e) (Id.).

Giacomini’s application was filed on November 29, 2000, and the Tran patent was filed a month later on December 29, 2000 (Id.). However, the Tran patent claimed priority to a provisional application filed several months before Giacomini’s application (Id.). The question before the court, therefore, was whether the Tran patent could rely upon the filing date of a provisional application to invalidate application of Giacomini et al. (Id.).

Giacomini argued that 35 U.S.C. § 119(e) only shifts the priority date of a patent — not the effective reference date (Id., at 7). In other words, Giacomini argued that while the provisional’s filing date could be used defensively to ward off prior art that might otherwise invalidate the Tran patent, it could not be used offensively to invalidate other patents or patent applications (Id.). In support of this position, Giacomini drew the court’s attention to In re Hilmer, 359 F.2d 859 (CCPA 1966), where the CAFC’s predecessor court held that a U.S. patent could not rely on the priority date of a foreign application to invalidate other patents because “Section 119 only deals with ‘right of priority’” (Id.).

Nevertheless, the CAFC held that the Tran patent was entitled to rely on the filing date of the provisional application to qualify as prior art under 35 U.S.C. § 102(e) (Id., at 9). In arriving at this holding, the court pointed out that 35 U.S.C. § 102(e)(2) states:

[A] person shall be entitled to a patent unless ... the invention was described in ... (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent....

(Id., at 4, emphasis added). The court then explained that 35 U.S.C. § 111(b)(8) makes it clear that provisional patent applications and non-provisional patent applications are given the same privileges under 35 U.S.C. § 119 (Id.). In light of these sections of the U.S. Code and the long-standing rule that the patentee must be the first inventor, the court held that the Tran patent could claim priority to the earlier-filed provisional application to invalidate the Giacomini application.

The court also pointed out that the Tran patent claimed priority to a U.S. provisional application, not a foreign application like in Hilmer. In addition, Hilmer was decided at a time when section 119 only addressed the benefit of claiming priority to foreign applications, and that it was not until 1994 that Congress added section 119(e) and the enactment of provisional applications (Id., at 7-8). Moreover, according to Hilmer, an earlier foreign application does not shift a patent’s effective reference date because section 102(e) explicitly requires the earlier application to be “filed in the United States" (Id., at 8).

Having clarified these issues, the court noted that an important limitation is that the provisional application relied upon “must provide written description support for the claimed invention” (Id., at 6). However, in the instant case, Giacomini waved this argument by failing to raise it before the Board (Id., at 6). Accordingly, the court held that that Giacomini’s patent application was anticipated under 35 U.S.C. § 102(e) since it was filed after the U.S. provisional patent application to which the Tran patent claimed priority.