35 USC § 102(e)
Posted by longacrepatentbarreview on November 4, 2010
35 USC § 102(e) basically makes US patents of others, and most recently USpublished applications of others, prior art as of their earliest effective filing date or their provisional filing date. 102(e) has always been a strange provision in that it works retroactively, making a US patent prior art as of its filing date, even though it is kept in confidence by the USPTO from its filing date to its issue or, now, its publication. Thus, you could own a perfectly valid US patent and be collecting billions and billions of dollars a year from royalties, and then one Tuesday, kaboom, a new US patent issues or is published, becomes prior art that day retroactively to a date that makes your patent invalid, and no more royalties.
Of course, the issuance of the patent now can’t change what the public knew back at its filing date, so it really is a strange provision. It gets even stranger when the application that issues or is published is an international application, a PCT application.
The present exam question pool has a CONSIDERABLE number of questions on PCT and the 102(e) date of a PCT application. These are gimmes, and your face should light up, and a chuckle or two escape your lips whenever you see one on your exam. Hope for three, four, five, and more! Bring ’em on! You just have to remember a few things.
If you forget how to find the 102(e) date of a PCT publication or patent, it’s all at MPEP 706.02(f) (1). IT’S INCHAPTER 700, NOT 1800. REMEMBER THAT IF YOU HAVE TO LOOK UP.
It all starts with a transition date.
For a PCT application filed on or after the transition date of November 29, 2000, the 102(e) date is the PCT filing date, as of its publication date, if and only if it is published in English and the US was designated. If those conditions aren’t met, then neither the publication nor the US patent, if it issues from the PCT application, are prior art at all under 35 USC § 102(e).
That transition date of November 29, 2000?
Here is a mnemonic that will work. Turkey month is the 11th month. 2 and 9 are 11, and this turkey day is a double zero.
However, this applies ONLY if the US patent issues directly from the PCT application. If a continuing application is filed (divisional, continuation, or CIP), then the 102(e) date for any publication or patent to issue from that continuing application is no later than the filing date of that continuing application. Let me say that again so it sinks in. If a continuing application is filed (divisional, continuation, or CIP) then the 102(e) date for any publication or patent to issue from that continuing application is no later than the filing date of that continuing application. Got it?
But if the PCT application that was the parent of the continuing application gets an earlier 102(e) date, then that earlier date applies to the patent that issues from that continuing application.
Whew! Almost there.
Finally, if the PCT application was filed prior to that transition date (and what was that date?), then the 102(e) date is determined by the Foot Rule, the day that the last of the Fee, Oath, and Translation were filed. That was the old rule that applied to all PCT applications before the law was changed in 1999, and it lingers on. Thus, if the fee was filed on March1, the declaration was filed on March 2, and the translation was filed on March 4, the 102(e) date would be March 4.
And remember, foreign priority under 35 USC § 119 never gives you a 102(e) date. NEVER, under any circumstances.
In 2000, when the basic patent law was amended to provide for publication, Congress decided to make published US applications also prior art as of their filing dates. The change was prospective so that published applications are 102(e) prior art only:
1. As to applications filed on or after November 29, 2000; and
2. Applications filedbeforeNovember29,2000 that are voluntarily published.
It doesn’t matter whether the published application issues as a patent or not. Congress and the PTO certainly outdid themselves this time in trying to make patent law as complex as the IRS code. Let me try to lay it out in as simple terms as I can.
35 USC § 102(e), prior to the law changes, simply made US patents prior art retroactively as of their earliest effective filing date. It was illogical, perhaps, but not hard to understand. On the day before it issued, it was just another secret application, but on the day it issued it had already been prior art for a number of years. There was one quirk. US patents that issued from an application that started life as a PCT application became prior art, not as of the filing date of the PCT application, but on the last date that the filing fee, oath, and translation were filed. That’s the FOOT Rule.
If a PCT application was filed on or after November 29, 2000, then that PCT application became 102(e) prior art when published, but only if published in English. A US patent issuing from a PCT application filed on or after November 29, 2000 isn’t prior art at all under 35 USC § 102(e).
US patents issuing from PCT applications filed before November 29, 2000 become prior art under the FOOT Rule as of the date of issue. US patents issuing from PCT applications filed on or after that date are never 102(e) prior art. Published PCT applications filed on or after November 29, 2000 in Englishbecome prior art as of their PCT filing date. Published PCT applications filed before November 29, 2000 did not and do not become 102(e) prior art.In other words, PCT applications filed on or after November 29, 2000 that arenot in English do not become 102(e) prior art either when published or issued. If that isn’t the screwiest thing you ever heard of, then I need to know what is screwier.