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[john122]

I have a US application that was filed on November 2007 that claims foreign priority to an EP application filed on November 2006.

The US application was filed under 35 USC 1.111 and did NOT enter the US through PCT.

The Examiner cites a reference that has a PCT filing date of September 2005 and a 371 date of March 2007.

Can this reference be used as prior art against my application.

Thanks.

[patentatt]

We need more details, like inventor names, whether the International app published in English, whether the 371 date refers to the satisfaction of the three requirements under old 102(e), etc.

I recommend that you follow that flow charts for analyzing 102e in chapter 700.  They are very good.

[john122]

My application was filed under 1.111 on November 2007 which claims foreign priority to an EP application filed on November 2006.

The primary reference cited by the Examiner is US 2007/0252966 which has a 371 date of February 23, 2007.

The primary reference has a PCT filing date of August 29, 2005, which was filed in Japanese and published in Japanese.  The PCT application no. is PCT/JP05/15628.

Does this help?

Thanks in advance.

[Isaac]

Sorry, I forgot to mention that the 371 publication is not in English.
I've tried to follow the chart, but I'm a little confused with regards to the date for my application.  Which date is used for 102(e).

Let's rule out a few things.

You didn't give us any publication dates, but it seems likely that the 371 publication is not a 102(b) reference.  Also, if the reference was not published in english, then the 102(e) date is the filing date of the US application. The international filing date and the date of completing the 371 formalities are not relevant.

What we cannot determine...

The reference may have a 102(a) date, and more importantly, any foreign application (which you haven't mentioned) serving as priority for the PCT application may a 102(a) date as well.

[john122]

The publication date of the reference is March 9, 2006.

[patentatt]

NONE OF THE BELOW IS LEGAL ADVICE AND I COULD BE WRONG.

As far as I can tell, the ref did not publish in English.  It published in Japanese.

I believe you can get it here:

http://www.wipo.int/pctdb/en/fetch.jsp?SEARCH_IA=JP2005015628&DBSELECT=PCT&C=10&TOTAL=1&IDB=0&TYPE_FIELD=256&SERVER_TYPE=19-10&QUERY=%28AN%2FPCT%2FJP05%2F15628%29+&START=1&ELEMENT_SET=B&SORT=41298425-KEY&RESULT=1&DISP=25&FORM=SEP-0%2FHITNUM%2CB-ENG%2CDP%2CMC%2CAN%2CPA%2CABSUM-ENG&IDOC=822304&IA=JP2005015628&LANG=ENG&DISPLAY=DOCS

Go to the "Published International Application" section and download the PDF.  Also check the publication language on the summary page: which indicates Japanese.

Because the intern. app was filed after 11/29/00, and because it was not published in English, it has no 102e date.

You still have to consider if it is 102a or 102b art.

102a: the U.S. ref's 11/07 pub date is after your foreign priority date - I don't know if your U.S. filing date beats it (if not, you will have to properly claim priority)
102b: the U.S. ref's 11/07 pub date is not 1 year before your U.S. filing date

NOTE: priority does not help you overcome 102B.

Check out the first flowchart under the "III. Flowcharts" section in the MPEP, and you can do all of this yourself:

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_02_f_1.htm

102e is hard but it is important to know.

NONE OF THE ABOVE IS LEGAL ADVICE AND I COULD BE WRONG.

[john122]

NONE OF THE BELOW IS LEGAL ADVICE AND I COULD BE WRONG.

As far as I can tell, the ref did not publish in English.  It published in Japanese.

I believe you can get it here:

http://www.wipo.int/pctdb/en/fetch.jsp?SEARCH_IA=JP2005015628&DBSELECT=PCT&C=10&TOTAL=1&IDB=0&TYPE_FIELD=256&SERVER_TYPE=19-10&QUERY=%28AN%2FPCT%2FJP05%2F15628%29+&START=1&ELEMENT_SET=B&SORT=41298425-KEY&RESULT=1&DISP=25&FORM=SEP-0%2FHITNUM%2CB-ENG%2CDP%2CMC%2CAN%2CPA%2CABSUM-ENG&IDOC=822304&IA=JP2005015628&LANG=ENG&DISPLAY=DOCS

Go to the "Published International Application" section and download the PDF.  Also check the publication language on the summary page: which indicates Japanese.

Because the intern. app was filed after 11/29/00, and because it was not published in English, it has no 102e date.

You still have to consider if it is 102a or 102b art.

102a: the U.S. ref's 11/07 pub date is after your foreign priority date - I don't know if your U.S. filing date beats it (if not, you will have to properly claim priority)
102b: the U.S. ref's 11/07 pub date is not 1 year before your U.S. filing date

NOTE: priority does not help you overcome 102B.

Check out the first flowchart under the "III. Flowcharts" section in the MPEP, and you can do all of this yourself:

http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_02_f_1.htm

102e is hard but it is important to know.

NONE OF THE ABOVE IS LEGAL ADVICE AND I COULD BE WRONG.

I went through the chart, and you are correct in that the 102(e) date does not stand.

Now the question is whether 102(a) or 102(b) can be used.

102(a) - the application is filed in the US on October 29, 2007 in which foreign priority was claimed to an EP application filed on November 8, 2006.  The reference at issue has a publication date of November 1, 2007.  Because this reference is published only a few days (November 1, 2007) before my foreign priority date (November 8, 2006), then this reference would be considered prior art under 102(a)?  Am I correct?

102(b) - the reference cannot be a 102(b) because it is not a year before my application.

[patentatt]

102(a) - the application is filed in the US on October 29, 2007 in which foreign priority was claimed to an EP application filed on November 8, 2006.  The reference at issue has a publication date of November 1, 2007.  Because this reference is published only a few days (November 1, 2007) before my foreign priority date (November 8, 2006), then this reference would be considered prior art under 102(a)?  Am I correct?

No, your sentence in bold is just wrong - you're confusing your 2006 priority date with 2007.

It seems that the U.S. ref was published just days after your U.S. filing date, and many months after your priority date, so it is not 102a art, even if you don't claim priority.

Again, this is not legal advice and I could be wrong.

[Isaac]

o, your sentence in bold is just wrong - you're confusing your 2006 priority date with 2007.

The OP says that the reference published in March 2006.  That's a valid 102(a) date no matter the language in which the reference published.  How does the applicant overcome the March 2006 date?

[patentatt]

o, your sentence in bold is just wrong - you're confusing your 2006 priority date with 2007.

The OP says that the reference published in March 2006.  That's a valid 102(a) date regardless of what in which the reference published.  How does the applicant overcome the March 2006 date?

That's the publication date of the International Publication.

So, I think you're right: it's a valid 102a ref.  It's not the reference that the current rejection is over (as I understand).  But the Examiner can substitute them with ease.

[Isaac]

So, I think you're right: it's a valid 102a ref.  It's not the reference that the current rejection is over (as I understand).  But the Examiner can substitute them with ease.

Exactly.

There's also the underlying Japanese application that may well be a 102(b) reference.   

[john122]

o, your sentence in bold is just wrong - you're confusing your 2006 priority date with 2007.

The OP says that the reference published in March 2006.  That's a valid 102(a) date regardless of what in which the reference published.  How does the applicant overcome the March 2006 date?

That's the publication date of the International Publication.

So, I think you're right: it's a valid 102a ref.  It's not the reference that the current rejection is over (as I understand).  But the Examiner can substitute them with ease.

So the international application having a publication date of March 2006 can be used as a 35 USC 102(a) reference for my application that has a foreign priority date of November 2006 even though the international application was published in Japanese?  I don't quite understand whats going now.

[patentatt]

So the international application having a publication date of March 2006 can be used as a 35 USC 102(a) reference for my application that has a foreign priority date of November 2006 even though the international application was published in Japanese?  I don't quite understand whats going now.

Yes.  There is no requirement in 102a that the reference is in English (contrast 102a with 102e).

Of course, you can traverse the rejection without drawing the Examiner's attention to the 102a rejection, and see what happens.  It's an interesting question to ask whether a failure to submit the 102a ref in an IDS would constitute a failure to satisfy rule 56.

[Isaac]

Of course, you can traverse the rejection without drawing the Examiner's attention to the 102a rejection, and see what happens.  It's an interesting question to ask whether a failure to submit the 102a ref in an IDS would constitute a failure to satisfy rule 56.

Forget about rule 56 for now.   Traversing would be a bad move if you know that allowance could result in an invalid patent. 

Most likely, traversing would involve taking on the expense to perfect priority just to get a new office action that does not advance prosecution in the slightest even though you knew ahead of time that it was time to amend the claims.   Hopefully you told the client that such was likely to happen and he doesn't think you are an idiot.

I've seen situations where the reference in question was the applicant's own patent or application.   I believe traversing in that case and would probably be fodder for a charge of inequitable conduct.  It is likely that you will not be able to convince anyone that your client didn't know his own reference was a 102(b).  It's questionable enough in cases like the one john122 describes.

[patentatt]

Forget about rule 56 for now.   Traversing would be a bad move if you know that allowance could result in an invalid patent.

1. You can't be serious.  You should (virtually?) always traverse any improper rejection.  If there is a proper rejection, let the examiner make it.

2. Also, you say "if you know that allowance could result in an invalid patent."  Any allowance could result in an invalid patent.  About 50% of litigated patents are proven invalid.  That can't be the standard for whether you accept an allowance.

The question here is whether to disclose.  Although the Fed. Cir. hasn't decided Therasense en banc yet, practitioners are still separately bound by rule 56 (you can't "forget" it), and it's an interesting question whether the applicant has to submit the International publication now.  For example, suppose that the examiner's rejection is wrong (even if the ref is prior art), and doesn't present a prima facie case of obviousness, then the applicant probably doesn't violate current rule 56 by failing to disclose, but probably would violate old rule 56.  There's also the question of whether the Inter. pub is cumulative to the references already of record, and/or whether the Examiner can be reasonably expected to know about and review the possible 102a rejection.

Most likely, traversing would involve taking on the expense to perfect priority just to get a new office action that does not advance prosecution in the slightest even though you knew ahead of time that it was time to amend the claims.   Hopefully you told the client that such was likely to happen and he doesn't think you are an idiot.

As I explained above, the applied U.S. ref does not appear to beat even the U.S. filing date of the OP's application, so I do not believe that he has to perfect priority.  Also, it would advance prosecution if the examiner doesn't make the possible 102a rejection.

I've seen situations where the reference in question was the applicant's own patent or application.   I believe traversing in that case and would probably be fodder for a charge of inequitable conduct.  It is likely that you will not be able to convince anyone that your client didn't know his own reference was a 102(b).  It's questionable enough in cases like the one john122 describes.

It's an interesting question for both post-issuance inequitable conduct and pre-issuance compliance with rule 56.