Re: Q11 and 12, April 2002 Am
« Reply #6 on: Jul 3rd, 2007, 8:54am »
For Q11, under MPEP 2136, for an int'l application filed before Nov 29, 2000, you have to use the old 102(e). In this case, we have to make the assumption that when the applicaton went national stage, it fully complied with USC 371(c)(1), (2), and (4), as provided in the older 102(e). Under the older 102(e), if 371 is satisfied, then the patent is given the international filing date as the priority date for prior art purposes.
For Q12, if you look at MPEP 2136, it does mention that 102(e) was amended in 1999 as part of the AIPA, and then again in 2002 as part of the Intellectual Property and High Technology Technical Amendments Act. We only see the current version and the pre-AIPA version in 2136, the current MPEP does not have the intervening version. As this test was provided in April 2002, 7 months before the 2002 change (see notes in USC 102 in MPEP), it was using this intervening version.
The intervening version states:
(e) the invention was described in—
(1) an application for patent, published under
section 122(b), by another filed in the United States
before the invention by the applicant for patent,
except that an international application filed under the
treaty defined in section 351(a) shall have the effect
under this subsection of a national application published
under section 122(b) only if the international
application designating the United States was published
under Article 21(2)(a) of such treaty in the
English language; or
(2) a patent granted on an application for
patent by another filed in the United States before the
invention by the applicant for patent, except that a
patent shall not be deemed filed in the United States
for the purposes of this subsection based on the filing
of an international application filed under the treaty
defined in section 351(a);
In this fact pattern, we are looking at a patent, not an application, so we look to (e)(2), which expressly states that international applications are not considered as being filed in the US, and thus only given their patent date as a priority date.
This seems very odd and probably is the basis for the change in 2002 to have applications and patents treated alike.