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[Examiner2000]

Sorry if this has been discussed at length (I couldn't find anything relevant in a search), but some parts of 102(e) seem insane to me.

I have an application which is afforded its foreign filing date.  I have a reference (different assignee), which was filed before the application in the US about 2 months before.  They also have a foreign filing date which predates the application by about 2 months.

It blows my mind that I'm about to indicate allowable subject matter when the case is out there when there is a clear anticipation both in actual filing and a foreign priority.  I know its some sort of legal mumbo jumbo but its very frustrating from a practical perspective.

Is it true that 102(e) is going out the window soon, maybe because of crazy aberations like this?

And the other way around, if my reference's application, my current application also couldn't be used as art under 102(e).  Here they are both allowed patents for the same thing??  Loophole?

[Isaac]

[qs]I have an application which is afforded its foreign filing date.  I have a reference (different assignee), which was filed before the application in the US about 2 months before.  They also have a foreign filing date which predates the application by about 2 months. [/qs]

If it makes you feel any better, if it weren't for in re Hilmer, which forces you to interpret 102(e) in this way, it is extremely likely that the applicant would simply swear behind the foreign filing date by pointing out that his invention disclosure sat in his attorney's cue for that period.  Normally swearing behind for only two months is fairly easy.

And, no this is not the reason for changes to 102.

[NJ Patent1]

It blows my mind that I'm about to indicate allowable subject matter when the case is out there when there is a clear anticipation both in actual filing and a foreign priority.  I know its some sort of legal mumbo jumbo but its very frustrating from a practical perspective. 

Examiner 2000:  The case cited by Isaac (Hilmer) is a tough read (at least for me, US judges trying to be as obtuse, profuse, and obfuscating  as UK judges ?)  But the point stands: “in the United States” in 102(e) means “in the United States”.  Applicant of the application ur about to allow gets the benefit of sec. 119, the “prior art” does not (defensive vs. offensive use of a priority date - well settled law).  If that antedating PA patent published anywhere before the priority date, apply it under 102(a) or (b) as the case may be!  If it didn’t, it ain’t PA in the US of A.  IMO not “mumbo-jumbo”, judicial construction of a statute, not an aberration.  Somebody gets a patent in the US, somebody else gets a patent in Switzerland.   UR a US Examiner.  What happens in CH ain't ur problem

Is it true that 102(e) is going out the window soon, maybe because of crazy aberations like this? 

Hmmm, I reviewed sec. 3 of the AIA again.  I find no repeal of 35 USC 102(e) per se.  But “before the invention” escape hatch via an interference will be gone. 

I enjoy and appreciate the participation of the Examining Corps in this forum.  But of course you gota get ur legal advice from the Office of the Solicitor. 

[Isaac]

But the point stands: “in the United States” in 102(e) means “in the United States”.

In my opinion that reasoning is too glib.   119(a) says that the foreign application "shall have the same effect as the same application would have if filed in this country."  119(a) does include a carve out that prevents foreign priority from being used to overcome 102(b) rejections, but it is not clear that "same effect" should not also be applied to 102(e).   I would suggest that under in re Hilmer, foreign applications do not have the same effect as if filed in this country.

One reason that in re Hilmer is not so straight forward is because the court was attempting to figure out what Congress actually intended.  I'm not convinced that the court arrived at the right answer.

 
  Applicant of the application ur about to allow gets the benefit of sec. 119, the “prior art” does not (defensive vs. offensive use of a priority date - well settled law).  If that antedating PA patent published anywhere before the priority date, apply it under 102(a) or (b) as the case may be!  If it didn’t, it ain’t PA in the US of A.  IMO not “mumbo-jumbo”, judicial construction of a statute, not an aberration.  Somebody gets a patent in the US, somebody else gets a patent in Switzerland.   UR a US Examiner.  What happens in CH ain't ur problem

Is it true that 102(e) is going out the window soon, maybe because of crazy aberations like this? 

Hmmm, I reviewed sec. 3 of the AIA again.  I find no repeal of 35 USC 102(e) per se.  But “before the invention” escape hatch via an interference will be gone. 

I enjoy and appreciate the participation of the Examining Corps in this forum.  But of course you gota get ur legal advice from the Office of the Solicitor. 


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