Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[john122]

US application at issue:
(1) US application claims priority to PCT application filed on April 20, 2007, which in turn claims foreign priority to a foreign application filed on April 21, 2006.
(2) the US application names two inventors, inventor Smith and inventor Doe.
(3) the US application is assigned to Company X.

Prior art reference:
(1) International application that was filed on July 21, 2005, and subsequently published as a WIPO publication on January 26, 2006.
(2) the International application claims foreign priority to a foreign application filed on July 21, 2004.
(3) the International application names four inventors, two of which are inventor Smith and inventor Doe.
(4) the international application is also assigned to Company X.

Question:
The Examiner cites the WIPO publication, in combination with another reference, under 35 USC 103(a) to reject the US application at issue.
Is the WIPO publication a 35 USC 102(b) reference?
Can I use 35 USC 103(c) to disqualify the WIPO publication as a prior art reference since the WIPO publication cannot be be considered a prior art reference under 35 USC 102(b)?

Thanks.

[mk1023]

The effective filing date of the application (assuming it was filed under 35 USC 120 or 365(c)) is only 4/20/2007. The foreign priority date is not a U.S. effective filing date and can only be used to overcome 102(a/e) references. The WIPO publication does qualify as a 102(b) reference.

See: http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_02.htm
(C) If the application claims foreign priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b), the effective filing date is the filing date of the U.S. application, unless situation (A) or (B) as set forth above applies. The filing date of the foreign priority document is not the effective filing date, although the filing date of the foreign priority document may be used to overcome certain references. See MPEP § 706.02(b) and § 2136.05.

[john122]

I'm a little confused.  I thought that any references discovered by the examiner must pre-date the foreign priority date of an application. 

[john122]

Thank you for the citation and for the help, mk1023.  Appreciate it.

[john122]

Sorry, but I'm still not understanding the MPEP section that you cited.

The US application at issue entered the US, via 35 USC 371, based on an International PCT application. 
The International PCT application was filed based on a foreign application that was filed in Great Britain, which the International application claims priority to.

Isn't the earliest effective filing date for the US application the foreign application filed in Great Britain?
If not, then what's the point of claiming foreign priority to the foreign application in a 35 USC 371 filing?

The reason why I'm asking is because the WIPO reference was published in January 2006, whereas the present US application has a foreign priority date of April 2006.
Based on these dates and my understanding (which may very well be wrong), the WIPO reference can only be used as a 35 USC 102(e) reference against the US application.
If I'm correct, then the applicant can use 35 USC 103(c) to disqualify the WIPO reference.

[mk1023]

Take a little closer look at 102(b)

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

The statute clearly says more than one year before an application is filed in the United States. Only a priority relationship to certain PCT filings or another U.S. application allows for an earlier U.S. filing date. The foreign priority will still knock out 102(a/e) references with a date in the 4/21/2006-4/20/2007 range.

Found a more definitive citation for you:
http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_13.htm
III.    EFFECT OF RIGHT OF PRIORITY
The right to rely on the foreign filing extends to overcoming the effects of intervening references or uses, but there are certain restrictions. For example, the 1 year bar of 35 U.S.C. 102(b) dates from the U.S. filing date and not from the foreign filing date; thus if an invention was described in a printed publication, or was in public use in this country, in November 1981, a foreign application filed in January 1982, and a U.S. application filed in December 1982, granting a patent on the U.S. application is barred by the printed publication or public use occurring more than one year prior to its actual filing in the United States.

[john122]

mk1023, thank you for your help.