# Presentation: 661196

## 35 U.S.C. §§ 102(e) and 374as amended by   H.R. 2215 (Technical Amendment Act)	Date enacted:  11/02/02Date effective: 11/29/00

**35 U.S.C. §§ 102(e) and 374****as amended by****   H.R. 2215 (Technical Amendment Act)**	Date enacted:  11/02/02Date effective: 11/29/00

- Prepared by:
- Office of Patent Legal Administration (OPLA)
- Robert J. Spar, Director
- (703) 308-5107
- Bob.Spar@USPTO.gov

- § 102(e) after HR 2215

- November 14, 2002

## Overview – Major changes to35 USC §§ 102(e) and 374, by enactment of HR 2215

- 35 USC § 102(e), after enactment of HR 2215,  completely replaces § 102(e) as set forth in the AIPA and is retroactively effective to the date of the AIPA (11/29/00).
- 35 USC § 102(e), after enactment of HR 2215, is however similar to the pre-AIPA § 102(e), with 2 significant differences, which may be summarized as:
- In addition to U.S. patents, now certain **publications** of U.S. and international (PCT) applications (IAs) may qualify as prior art references under 35 USC § 102(e)
**Certain international filing dates** are now considered to be U.S. filing dates under 35 USC § 102(e) and may now be used as the prior art date of a reference to make rejections, under 35 USC §§ 102(e) and 103(a).

- § 102(e) after HR 2215

- November 14, 2002

## Overview – Major changes to

_**35 USC §§ 102(e) and 374, by enactment of HR 2215 (Cont’d)**_

_**Prior art references now available under § 102(e)**_
_**1.  U.S. Patents**__ (formerly: could not use any IA filing date) _
- Now:  If a U.S. patent issues from, or claims benefit of, an IA, the U.S. patent’s prior art date may now be the filing date of the IA if the following three conditions are met:
- the **IA was filed on or after 11/29/00**;
- the IA **designated** the US; and
- the IA publication (by WIPO) was in **English. **
- Note: when the three conditions are met, the IA filing date is a U.S. filing date for § 102(e) purposes.
_**2.  **__**U.S. Application Publications**__** **__(did not exist before 11/29/00):_** **
- Now:  A U.S. application publication is prior art as of the application’s U.S. effective filing date, which can include an IA filing date, if the same three conditions are met.

- § 102(e) after HR 2215

- November 14, 2002

## Overview – Major changes to

- _35 USC §§ 102(e) and 374, by enactment of HR 2215 (Cont’d)_

_**3.  WIPO Publications of IAs **__(formerly: A WIPO publication was not prior art under § 102(e))_
- _Now:_ A WIPO publication of an IA is § 102(e)(1) prior art as of the IA’s filing date, if the same three conditions are met; namely:
- the **IA **was filed** on or after 11/29/00**,
- the IA **designated** the **US**, &
- the IA publication (by WIPO) was in **English**.

_**Prior art references now available under § 102(e) **__**(Cont’d)**_

- § 102(e) after HR 2215

- November 14, 2002

## NEW:	 The new 35 USC § 102(e) provisions must be used in examining any application, or patent under reexamination, effective immediately, 

- _NEW:_	 The new 35 USC § 102(e) provisions must be used in examining **any** application, or patent under reexamination, effective immediately,
- 	with one exception, when the old (pre-AIPA) §102(e) provisions must be used.  See below.
- _OLD:_ 	The old (pre-AIPA) 35 USC* § *102(e) provisions are **only** used when a prior art reference is a patent issued (directly or indirectly) from an _IA which was filed before 11/29/00_.
- 	In this situation, the prior art date of such patent under the pre-AIPA 35 USC § 102(e) should be used.  This would usually be the 35 USC § 371 (c)(1),(2) and (4) date of fulfillment

- Overview – When to use the new and old 35 USC § 102(e)_ _provisions

- § 102(e) after HR 2215

- November 14, 2002

## ALL previous guidance and implementation materials on the AIPA’s § 102(e) are outdated.  Thus, the following are out of date and should no longer be relied upon:

**Previously Published § 102(e) Guidelines and Materials are Obsolete**

**ALL** previous guidance and implementation materials on the AIPA’s § 102(e) are outdated.  Thus, the following are out of date and should no longer be relied upon:
*Examination Guidelines for 35 USC 102(e)(2), as amended by the AIPA of 1999,* 1243 OG 1037 (Feb. 27, 2001)
- Guidelines for applying references under § 102(e) set forth in the 8th edition of the MPEP (August 2001)
- Previous training materials on 35 USC §§ 102(e) and 374 after the AIPA (dated prior to 10/01/02)
- Q’s and A’s on the USPTO’s website addressing 35 USC §§ 102(e) and 374 after the AIPA posted prior to 10/01/02
- Form paragraphs and examination notes for using those form paragraphs, prior to 10/01/02

- § 102(e) after HR 2215

- November 14, 2002

## Contents

- Overview ............................................................................................................	2-5
- 35 USC §§ 102(e) & 374 after HR 2215
- Previous § 102(e) Guidelines Obsolete ............................................................ 	6
- Statutory language  -  35 USC §§ 102(e) & 374 and §§ 4508 & 4505 of the AIPA ......	8-11
- Applying 35 USC §§ 102(e)
- Guideline 1 of 5 - U.S. Publications & Patents (no IA filings involved).......................	12
- Example A1A .............................................................................	13-14
- Determining § 102(e) Prior Art Date for Publications and Patents involving IAs –  	first step determine if IA was filed on or after 11/29/00  ................................	15
- Guideline 2 of 5 - IA filing date is on or after 11/29/00: conditions to use that date .....	16
- Examples P2A & P2B............................................................................ 	17, 18
- Guideline 3 of 5 - IA filing date is on or after 11/29/00: when that date can’t be used .	19
- Examples P3A & P3B...........................................................................	20,21
- Guideline 4 of 5 - IA filing date is before 11/29/00: publications can’t use the IA date ..	22
- Examples A4A, A4B & A4C ...................................................................	23-25
- Guideline 5 of 5 -  IA filing date is before 11/29/00: patents use Pre-AIPA § 102(e)...	26, 27
- Examples P5A, P5B & P5C...................................................................	28-32
- Summary           ..........................................................................................	33, 34
- Implementation of §102(e) ....................................................................................	35, 36
- Conclusion 	.........................................................................................	37
- Information Contacts	.........................................................................................	38
- Glossary of Terms 	.........................................................................................	39
- Appendix:  Background; Applying References; Comparison Chart (44); Finding WIPO Publications to Determine Prior Art Dates (45-51);  Five Guidelines; Additional Examples...	41-64

- Slide No.

- § 102(e) after HR 2215

- November 14, 2002

## 35 USC §102(e) AFTER H.R. 22151

- * * * * *
- (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 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 _an international application_ filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application _designated the United States_ and was published under Article 21(2) of such treaty _in the English language_; or”(emphasis added)
- 1**Caveat:  **The relevant effective date provision of HR 2215 requires that the old** **(Pre-AIPA)** **§102(e) applies when the prior art reference is a patent issued (directly or indirectly) from an _IA which was filed before 11/29/00_.

- 35 USC §102(e) AFTER H.R. 2215*1*

- § 102(e) after HR 2215

- November 14, 2002

## 35 USC § 374 after H.R. 2215 

- 	This provision allows certain WIPO publications of IAs to be used as prior art under 35 USC § 102(e) as of the IA’s filing date, if the previously set forth three conditions are met, namely:
- the **IA was filed on or after 11/29/00**;
- the IA **designated** the US; and
- the IA publication (by WIPO) was in **English. **

- 35 USC § 374 after H.R. 2215

- § 102(e) after HR 2215

- November 14, 2002

## H.R. 2215 Statutory Changes to the effective date provisions

- § 102(e) after HR 2215

- November 14, 2002

## H.R. 2215 Statutory Changes to the effective date provisions continued

- EFFECTIVE DATE PROVISIONS (section 4508 of AIPA as revised by HR 2215).
- * * * * *
- _Patents resulting from an international application filed before November 29, 2000 and applications published_ pursuant to section 122(b) or Article 21(2) of the treaty defined in section 351(a) _resulting from an international application filed before November 29, 2000_ **shall not be effective as prior art** _as of the filing date of the international application_; however, such patents shall be effective as prior art in accordance with section 102(e) in effect on November 28, 2000. (emphasis added)
- This provides that: 1) patents and application publication references _**may not**_ rely on an IA filing date for § 102(e) purposes if that date is before 11/29/00, nor may _**such international application be used as a bridge to an earlier U.S. filing date**_ for prior art purposes, and
-  2) 35 USC § 371 date is used for patents of IAs filed prior to 11/29/00.

- § 102(e) after HR 2215

- November 14, 2002

## Applying 35 USC § 102(e):  U.S. Publications & Patents from § 111(a) applications (Guideline 1 of 5)

- Guideline 1:  If _U.S. patent or U.S. application publication_ issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest U.S. effective filing date. See examples A1A (supra) and A1B, P1 (appendix).
- Effective filing date is the filing date for which priority/benefit is claimed under 35 USC §§ 119(e) & 120 so long as subject matter used to make the rejection is appropriately supported in the earlier filed application’s disclosure (and any intermediate application(s)).
- Types of Priority & Benefit Claims
- Priority to prior U.S. provisional application(s) (35 USC § 119(e))
- Benefit of prior U.S. nonprovisional application(s) (35 USC § 120)
**Note:**   The prior art date for more than 80% of the references that can be applied under 35 USC § 102(e) can be determined under this guideline.

- § 102(e) after HR 2215

- November 14, 2002

##  U.S. application publication § 102(e)(1) date: 17 July 2000

**§ 111(a) application filing date**

**§ 111(b) application filing date**

**Ex. A1A.** _**PUBLICATION**_ **OF § 111(a) APPLICATION WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION.**

*Sample Application Publication – Guideline 1*

- Guideline 1.  If _U.S. patent or application publication_ issued from an application under 35 USC § 111(a), and the application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest U.S. effective filing date.

- § 102(e) after HR 2215

- November 14, 2002

**Ex. A1A.** _**PUBLICATION**_ **OF § 111(a) APPLICATION WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION. **

- Sample Timeline – Guideline 1

- § 102(e) after HR 2215

- November 14, 2002

## § 102(e) Prior Art Date for Publication and Patent based (directly or indirectly) on an IA

- The international filing date of an IA is a critical threshold condition in determining the effective prior art date of an application **publication **and** patent**
- The critical inquiry is:
**Does the IA have an international filing date **_**on or after**_** 11/29/00 (Guidelines 2 and 3),**
**or**
**Does the IA have an international filing date **_**prior to**_** 11/29/00 (Guidelines 4 and 5).**
**Note:  For information on obtaining WIPO documents to determine the IA filing date, whether the US was designated and publication language see slides 45-51 in the Appendix.**

- § 102(e) after HR 2215

- November 14, 2002

## Determining § 102(e) Prior Art Dates Publications and Patents involving IAs (Guideline 2 of 5)

***NOTES:***
- If the conditions above are met, the IA filing date _is_ a U.S. filing date for prior art purposes.
- The effective U.S. filing date is affected by priority/benefit claims under 35 USC    §§ 119(e), 120 & 365(c). Note: Any IA having a filing date relied upon under 365(c) (continuity benefit claim) must satisfy the three conditions above if the relied upon IA filing date(s) is to be considered a U.S. filing date for prior art purposes.
- A claim under §365(a) is a foreign priority claim to an IA and _will not_ result in an earlier U.S. filing date (and IA filing date cannot be used as a prior art date).

- Determining § 102(e) Prior Art Dates _Publications and Patents involving IAs (Guideline 2 of 5)_

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P2A: PATENT DERIVED FROM § 111(a) CONTINUATION OF AN IA FILED ON/AFTER 11/29/00

** ****01 Mar 2001**

** ****01 Nov 2002**

** ****01 Nov 2003**

**§ 111(a) application claiming the benefit of the IA under § 365(c) is filed**

**IA filed, **
**US was designated**

**Patent granted on § 111(a) application**

- 11/29/00

**WIPO publication of IA  **_***in English***_

**01 Sept 2002**

** ****01 July 2003**

**Publication P by USPTO under § 122(b)**

- Guideline 2. If** **the** **_U.S. patent, U.S. application publication, or WIPO publication_ issued from, or claims benefit to, an IA which has an _international filing date on or after 11/29/00_, _designated_ the United States, and was published in _English_ by WIPO (under PCT Article 21(2)) the **§ 102(e) date is the international filing date, or any earlier effective U.S. filing date.**

- Sample Timeline – Guideline 2

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P2B: PATENT DERIVED FROM THE NATIONAL STAGE OF IA(§ 371  APPLICATION) WHICH CLAIMS PRIORITY/BENEFIT OF A U.S. APPLICATION – (IA FILED ON/AFTER 11/29/00) 

**Ex. P2B: **_**PATENT**_** **DERIVED FROM THE NATIONAL STAGE OF IA(§ 371  APPLICATION) WHICH CLAIMS PRIORITY/BENEFIT OF A U.S. APPLICATION – (IA FILED ON/AFTER 11/29/00)

- Guideline 2. If** **the** **_U.S. patent, U.S. application publication, or WIPO publication_ issued from, or claims benefit to, an IA which has an _international filing date on or after 11/29/00_, _designated_ the United States, and was published in _English_ by WIPO (under PCT Article 21(2)) the **§ 102(e) date is the international filing date, or any earlier effective U.S. filing date.**

**Patent granted on ****§ 371 appl. **

**§ 371 (c)(1), (2) and (4) fulfillment**

**IA filed in Swedish, US designated, claims  priority/ benefit of prior U.S. appl.**

** ****01 Oct 2002**

** ****01 Nov 2003**

** ****01 Jan 2000**

- 11/29/00

** ****01 July 2001**

**WIPO  publication of IA  **_***in English***_

** ****01 Dec 2002**

**U.S. appl. publication  under § 122(b)**

** ****01 Jan 2001**

**§ 111(a)  appl. filed**

- Sample Timeline – Guideline 2

- § 102(e) after HR 2215

- November 14, 2002

## Guideline 3.  If the U.S. patent issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English, the U.S. patent:
	if issued from the 35 USC § 371 application, has no § 102(e)(2) date, or
 	 if issued from a U.S. continuing application claiming benefit of the IA, has for its § 102(e)(2) date the filing date of a later-filed continuing U.S. application
 See examples P3A and P3B (supra) and P3C (appendix).

- 	if issued from the 35 USC § 371 application, has _**no**__ § 102(e)(2) date_, or
-  	 _if issued from a U.S. continuing application claiming benefit of the IA,_ has for its § 102(e)(2) date _the filing date of a later-filed continuing U.S. application_
-  See examples P3A and P3B (supra) and P3C (appendix).

- Applying 35 USC § 102(e): _U.S. Patents __of IAs (Guideline 3 of 5)_

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P3A: PATENT DERIVED FROM § 111(a) CONTINUATION OF AN IA FILED ON/AFTER 11/29/00, WIPO PUBLICATION NOT IN ENGLISH 

** ****01 Nov 2002**

- Guideline 3. If** **the** **_U.S. patent_ issued from, or claims benefit to, an IA which was filed _on or after 11/29/00_, but the WIPO publication was _not in English_, the U.S. patent**:  **if issued from the 35 USC § 371 application, has _**no**__ § 102(e)(2) date_, or _if issued from a U.S. continuing application claiming benefit of the IA,_ has for its  § 102(e)(2) date _the filing date of a later-filed continuing U.S. application_

- Sample Timeline – Guideline 3

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P3B: PATENT DERIVED FROM THE NS OF AN IA (§ 371 APPLICATION) WHICH CLAIMS PRIORITY/BENEFIT OF A U.S. APPLICATION (IA FILED ON/AFTER 11/29/00, WIPO PUBLICATION  NOT IN ENGLISH) 

**Ex. P3B: **_**PATENT**_** **DERIVED FROM THE NS OF AN IA (§ 371 APPLICATION) WHICH CLAIMS PRIORITY/BENEFIT OF A U.S. APPLICATION (IA FILED ON/AFTER 11/29/00, WIPO PUBLICATION  NOT IN ENGLISH)** **

**Patent granted on ****§ 371 appl.**

**IA filed in German, US designated, claims priority/  benefit of prior U.S. appl.**

** ****01 Nov 2003**

- 11/29/00

** ****01 July 2001**

**WIPO publication of IA **_***NOT***_** **_***in English***_

** ****01 Dec 2002**

**US appl. publication  under § 122(b)**

** ****01 Jan 2001**

- Guideline 3. If** **the** **_U.S. patent_ issued from, or claims benefit to, an IA which was filed _on or after 11/29/00_, but the WIPO publication was _not in English_, the U.S. patent**:  **if issued from the 35 USC § 371 application, has _**no**__ § 102(e)(2) date_, or _if issued from a U.S. continuing application claiming benefit of the IA,_ has the § 102(e)(2) date of _the filing date of a later-filed continuing U.S. application_

- Sample Timeline – Guideline 3

- § 102(e) after HR 2215

- November 14, 2002

## Guideline 4. The publication of the IA (either a WIPO publication or a US publication of a NS application) is not considered prior art under § 102(e)(1) as of the IA filing date if any of the following conditions are true:
          1) The international filing date was prior to 11/29/00,
	 2) The IA did not designate the U.S., or  
	 3) The WIPO publication of the IA was not in English. 
      Since the IA filing date is not considered a U.S. filing date for prior art purposes, any earlier U.S. filing dates for which benefit is claimed by the IA are not § 102(e) prior art dates. See Examples A4A through A4C (supra).
Note:  The publication of such an IA is prior art under § 102(a) or § 102(b) as of its publication date.

-           1) The international filing date was _**prior**_ to 11/29/00,
- 	 2) The IA did not designate the U.S., _or_
- 	 3) The WIPO publication of the IA was _**not**_ in English.
-       Since the IA filing date _is not_ considered a U.S. filing date for prior art purposes, any earlier U.S. filing dates for which benefit is claimed by the IA are not § 102(e) prior art dates. See Examples A4A through A4C (supra).
**Note:**  The publication of such an IA is prior art under § 102(a) or § 102(b) as of its **publication date.**

- Applying 35 USC § 102(e): _U.S. and WIPO __Publications of IAs (Guideline 4 of 5)_

- § 102(e) after HR 2215

- November 14, 2002

## Ex. A4A: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA FILED BEFORE 11/29/00 AFTER PUBLICATION OF IA BY WIPO IN ENGLISH WHICH CLAIMS PRIORITY OF A PRIOR U.S. PROVISIONAL APPLICATION 

**IA filed in Sweden, desig. **
**the US, claims priority of             § 111(b) appl****. **

**U.S. appl. publication  of **
**§ 111(a) appl. under § 122(b)**

**§ 111(a) appl.  filed claiming benefit of the IA appl. and the ****§ 111(b) appl.  under 35 USC §§ 365(c) and 119(e)**

**Publication of IA in English under PCT Art. 21(2) by WIPO**

** ****01 Jan 1999**

** ****01 Dec 2001**

** ****01 July 2000**

- 11/29/00

** ****01 Jan 2000**

**§ 111(b) application filed before effective date**

** ****01 July 2001**

- Sample Timeline – Guideline 4

- § 102(e) after HR 2215

- November 14, 2002

## Ex. A4B: PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA FILED ON/AFTER 11/29/00 BY WIPO IN A LANGUAGE OTHER THAN ENGLISH 

**IA filed in Germany, desig. the US**** **

**U.S. appl. publication of NS under § 122(b)**

**National Stage (NS) fulfilling § 371(c)(1), (2), and (4)**

**WIPO ****publication of IA in German under PCT Art. 21(2) **

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Nov 2003**

** ****01 July 2002**

- 11/29/00

- Sample Timeline – Guideline 4

- § 102(e) after HR 2215

- November 14, 2002

## Ex. A4C: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA FILED ON/AFTER 11/29/00 AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

**IA filed in Germany, desig. the US **

**U.S. appl. publication of****§ 111(a) appl.  under § 122(b)**

**§ 111(a) application filed claiming benefit of the IA application under 35 USC § 365(c)**

**WIPO publication of IA in German under PCT Art. 21(2) **

** ****01 Jan 2001**

** ****01 Nov 2003**

** ****01 July 2002**

- 11/29/00

** ****01 July 2003**

- Sample Timeline – Guideline 4

- § 102(e) after HR 2215

- November 14, 2002

## Determining § 102(e) Prior Art Dates Patents involving IAs (Guideline 5 of 5)

- Determining § 102(e) Prior Art Dates _Patents involving IAs (Guideline 5 of 5)_

- § 102(e) after HR 2215

- November 14, 2002

## Determining § 102(e) Prior Art Dates Patents involving IAs (Guideline 5 of 5).

- Determining § 102(e) Prior Art Dates _Patents involving IAs (Guideline 5 of 5)._

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P5A: PATENT DERIVED FROM THE NATIONAL STAGE OF AN  IA WHICH CLAIMS PRIORITY OF A U.S. PROVISIONAL APPLICATION

**§ 102(e) date of the patent: 14 Jan 2000**

**§ 111(b) application filed**

**IA filing date**

**Fulfillment of § 371 (c)(1)(2) & (4)**

**IA Publication by WIPO**

- Sample Patent – Guideline 5

- If** **the _U.S. patent_ issued from, or claims benefit to, an IA filed _**prior**_ to_ Nov. 29, 2000_, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of the later-filed U.S. application that claimed the benefit of the international application.

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P5A: PATENT DERIVED FROM THE NATIONAL STAGE OF AN IA WHICH CLAIMS PRIORITY OF A U.S. PROVISIONAL APPLICATION 

**Ex. ****P5A**: _**PATENT**_** DERIVED FROM THE NATIONAL STAGE OF AN IA WHICH CLAIMS PRIORITY OF A U.S. PROVISIONAL APPLICATION **

**Filing date of U.S. provisional application**

**Patent granted on § 371 application**

**Fulfillment of § 371 (c)(1), (2) and (4)**

**IA filed, with priority claim to prior US appl., designated US**

** ****14 July 1997**

**14 Jan 2000**

** ****12 Mar 2002**

** ****08 July 1998**

- 11/29/00

** ****28 Jan 1999**

**IA publication by WIPO**

- Sample Timeline – Guideline 5

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P5B:  PATENT DERIVED FROM THE CONTINUATION OF AN IA WHICH CLAIMS PRIORITY/BENEFIT OF A U.S. APPLICATION

**§ 111(b) application filing date**

**IA filing date**

**§ 111(a) application filing date**

**§ 102(e)(2) date of the patent :   ****04 Apr 2000**

- Sample Patent – Guideline 5

- If** **the _U.S. patent_ issued from, or claims benefit to, an IA filed _**prior**_ to_ Nov. 29, 2000_, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of the later-filed U.S. application that claimed the benefit of the international application.

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P5B: PATENT DERIVED FROM THE CONTINUATION OF AN IA WHICH CLAIMS PRIORITY / BENEFIT OF A U.S. APPLICATION

**Ex. ****P5B:** _**PATENT**_** **DERIVED FROM THE CONTINUATION OF AN IA WHICH CLAIMS PRIORITY / BENEFIT OF A U.S. APPLICATION

**§ 111(a)/(b) application**
**filed**

**Patent granted on § 111(a) application**

**§ 111(a) application filed claiming the benefit of the IA and the prior U.S. application**

**IA filed, with priority/benefit claim of prior US appl., designated US**

** ****14 Oct 1997**

** ****04 Apr 2000**

** ****01 Jan 2002**

** ****12 Oct 1998**

- 11/29/00

** ****22 April 1999**

**IA publication by WIPO**

- Sample Timeline – Guideline 5

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P5C: PATENT DERIVED FROM § 111(a) CONTINUATION OF THE NATIONAL STAGE OF AN IA FILED BEFORE 11/29/00

**Ex. P5C: **_**PATENT**_** **DERIVED FROM § 111(a) CONTINUATION OF THE NATIONAL STAGE OF AN IA FILED BEFORE 11/29/00

**§ 111(a) appl.**
**filed which is a continuation of the § 371 appl.**

**Patent granted on § 111(a) appl.**

**IA fulfillment of § 371 (c)(1), (2) & (4)**

**IA filed, designated US, claims priority of a Swiss appl.**

** ****01 Nov 2002**

** ****01 Apr 2001**

** ****31 May 2003**

** ****31 Oct 1999**

- 11/29/00

** ****01 May 2000**

**WIPO publication of IA **_***in any language***_

**US appl. Publication of § 111(a) appl.**

** ****20 Dec 2002**

- Sample Timeline – Guideline 5

- § 102(e) after HR 2215

- November 14, 2002

## IF IA has an international filing date on or after 11/29/00, the additional criteria that must exist in order to use the IA filing date as a prior art date under 
§ 102(e) are:
The IA must have designated the U.S.
IA must have been published in English by WIPO

If both conditions are present, the international filing date can be used as a prior art date and it is a U.S. filing date for purposes of § 102(e). 

If either condition is missing, the international filing date cannot be used as a prior art date. Further, since the IA filing date is not considered a U.S. filing date for prior art purposes, earlier U.S. filing dates for which benefit is claimed by the IA are not prior art dates. 

**§ 102(e) are:**
**The IA must have designated the U.S.**
**IA must have been published in English by WIPO**
**If** both conditions are present, the international filing date can be used as a prior art date and it is a U.S. filing date for purposes of § 102(e).
**If** either condition is missing, the international filing date cannot be used as a prior art date. Further, since the IA filing date **is not** considered a U.S. filing date for prior art purposes, earlier U.S. filing dates for which benefit is claimed by the IA are not prior art dates.

- Summary
- _Determining __§__ 102(e) Prior Art Dates for Publications and Patents involving IAs _

- § 102(e) after HR 2215

- November 14, 2002

## IF IA has an international filing date prior to 11/29/00:

- _Determining § 102(e) Prior Art Dates for Publications and Patents involving IAs - __*continued*_

**IF IA has an international filing date **_**prior to 11/29/00**_**:**
- For WIPO or U.S. application publications, _NEVER_ applya reference under § 102(e)(1) using the IA filing date or a U.S. filing date prior to the IA filing date.  See Example A4A (Guideline 4).
- For patents, the § 102(e) date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (*e.g.,* National Stage entry) or the filing date of the later-filed U.S. application that claimed the benefit of the international application.  See Examples P5A through P5D (Guideline 5).

- § 102(e) after HR 2215

- November 14, 2002

## Previous prior art rejection(s) made using AIPA’s § 102(e) where a reply by applicant(s) has been filed:
Examiners should determine if reference(s) is still good prior art under § 102(e) in view of new law.
In particular, examiners should pay special attention to U.S. application publications (applied against the claims) using international filing dates prior to 11/29/00 (or using such a date to complete a continuity claim).  These references are no longer  “prior” art under § 102(e) as amended by H.R. 2215.
Final rejection practice:  In the rare circumstance that a second or subsequent action contains a new ground of rejection necessitated by the change to § 102(e) that was not also necessitated by an amendment to the claims or as a result of certain information disclosure statements (See MPEP 706.02(a)), that action cannot be made final.  See MPEP 706.07(a).
New prior art rejections using § 102(e) in view of new law.
Examiners should immediately use revised (Oct. 2002 or later)    § 102(e) form paragraphs (available from USPTO Home Page (intranet) under IT Announcements)

- Examiners should determine if reference(s) is still good prior art under § 102(e) in view of new law.
- In particular, examiners should pay special attention to U.S. application publications (applied against the claims) using international filing dates _prior to 11/29/00_ (or using such a date to complete a continuity claim).  These references are no longer  “prior” art under § 102(e) as amended by H.R. 2215.
**Final rejection practice**:  In the rare circumstance that a second or subsequent action contains a new ground of rejection necessitated by the change to § 102(e) that was not also necessitated by an amendment to the claims or as a result of certain information disclosure statements (See MPEP 706.02(a)), that action **cannot** be made final.  See MPEP 706.07(a).
- New prior art rejections using § 102(e) in view of new law.
- Examiners should immediately use revised (Oct. 2002 or later)    § 102(e) form paragraphs (available from USPTO Home Page (intranet) under IT Announcements)

- Implementation of § 102(e) in view of HR 2215

- § 102(e) after HR 2215

- November 14, 2002

## Searching applications in view of  § 102(e)
The search conducted when examining all applications or patents under reexamination should include searching relevant patent application publications
Updated searches for applications filed before 11/29/00 should include an appropriate search of patent application publications.  
WIPO publications of IAs may also be relevant to consider in view of  § 102(e) but only if the IA filing date is on or after 11/29/00, the United States was designated and the IA was published in English under PCT Article 21(2) by WIPO.

- The search conducted when examining all applications or patents under reexamination should include searching relevant patent application publications
- Updated searches for applications filed before 11/29/00 should include an appropriate search of patent application publications. * *
- WIPO publications of IAs may also be relevant to consider in view of  § 102(e) but only if the _IA filing date is on or after 11/29/00_, the United States was _designated_ and the IA was published in _English_ under PCT Article 21(2) by WIPO.

- Implementation of § 102(e) in view of HR 2215 *continued*

- § 102(e) after HR 2215

- November 14, 2002

## Conclusion

- Apply § 102(e), as amended, to **all** applications under examination and patents under reexamination, **whenever filed.  **
- To determine the prior art date of a reference, use the flowcharts and follow the 5 guidelines for applying § 102(e).
-  Consider proper domestic priority claims to provisional applications under            § 119(e), benefit claims to nonprovisional applications under § 120 or benefit claims to international applications under § 365(c) in determining the effective U.S. filing date under 102(e), but remember the relied upon application and any intermediate application must support the subject matter used in the rejection.
- _EVER_ use an _international filing date prior to 11/29/00 _as a prior art date,
- a **patent** issuing from the National Stage of an IA filed before 11/29/00 will continue to be applied as of the § 371(c)(1), (2) and (4) date.
- _EVER_ apply a reference based on a foreign priority filing date claimed under 35 USC §§ 119(a)-(d) or 365(a), in U.S. or WIPO application publications or U.S. patents as the prior art date under § 102(e).
- _EVER_ apply a reference based on the filing date of an IA when the IA did not designate the U.S. or was published in a language other than English.  Use published IA as the reference, but under § 102(a) or (b) as of the publication date of the IA.

- DO...

- DON'T...

**DOs & DON'Ts of 35 USC § 102(e)**

- § 102(e) after HR 2215

- November 14, 2002

## Information Contacts

- For additional information visit the “35 USC §102(e) after HR 2215” website at: _http://www.uspto.gov/web/offices/dcom/olia/aipa/whatsnew.htm_
- Direct questions by e-mail or telephone to:
- Legal Advisors in OPLA:
- 	Joni Chang at Joni.Chang@USPTO.gov or (703) 308-3858
- 	Jeanne Clark at Jeanne.Clark@USPTO.gov or (703) 306-5603
- 	Robert Clarke at Robert.Clarke@USPTO.gov or (703) 305-9177
- 	Michael Lewis at Michael.Lewis@USPTO.gov or (703)306-5585
- 	Darnell Jayne at Darnell.Jayne@USPTO.gov or (703) 305-3310
- 	Mark Polutta at Mark.Polutta@USPTO.gov or (703) 308-8122
- Director of OPLA:
- 	Robert J. Spar, at Bob.Spar@USPTO.gov or (703) 308-5107

- § 102(e) after HR 2215

- November 14, 2002

## Glossary of Terms

**AIPA = **American Inventors Protection Act of 1999 (Pub. L. 106-113, 113 Stat. 1501 (enacted 11/29/1999)
**§ 111(a) application** = non provisional application filed under 35 USC § 111(a)
**§ 111(b) application** = provisional application filed under 35 USC § 111(b)
**§ 119(e)** = domestic priority claim relying on a provisional application
**§ 120 benefit claim** = a benefit claim made to an earlier non-provisional application.
**Domestic priority/benefit claims under 35 USC §§ 119(e) and 120 = **all references to claims for priority/benefit under §§ 119(e) & 120, respectfully.  It will be assumed for the examples that the subject matter relied upon in making a rejection is supported in all of the parent applications relied upon by the application published or patented in the examples.
**11/29/00** = effective date of AIPA amendments  and HR 2215 amendments to§§ 102(e) and 374
**IA** = international application
**IA filed on/after 11/29/00** =  international filing date is on or after 11/29/00
**WIPO** = World Intellectual Property Organization
**PCT** = Patent Cooperation Treaty
**WIPO Publications** = publications of IAs under PCT Article 21(2)
**NS** = National Stage of an international application (35 USC **§** 371 application)

**Glossary of Terms**

- § 102(e) after HR 2215

- November 14, 2002

## Thank You

- § 102(e) after HR 2215

- November 14, 2002

## On 11/29/00, the American Inventors Protection Act of 1999 (AIPA) provided 35 USC §102(e) prior art effect of:

- U.S. patent application publications;
- WIPO publications of international applications; and
- Patents (based on an IA filed on or after 11/29/00)
- On 11/02/02, the Technical Correction Act (H.R. 2215) modified 35 USC § 102(e) under AIPA to make §102(e) applicable to all applications being examined, or patents under reexamination or being contested, whenever filed.
- §102(e) under H.R. 2215 is retroactive to 11/29/00.

- APPENDIX:  Background
- _AIPA & H.R. 2215 (Technical Correction to AIPA)_

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Caveats to consider when relying on priority dates of references

- _Priority/benefit claims_:  The priority/benefit data in U.S. application publications may not be accurate or complete since applications are generally published, as filed, without Office review or verification of priority/benefit claims.
- Examiners should be aware that the priority/benefit claim on the front cover of the publication may be more inclusive than the claim made in the first sentence of the specification of the publication since the priority/benefit claim on the front cover is created from PALM data which is separately captured and updated.
-  Priority/benefit data in patents is more reliable than in publications.

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Caveats to consider when relying on priority dates of references

- _Resolving Items 1, 2, & 3:_ Uncertainties about 1) sufficiency of the disclosure, 2) priority/benefit claims, and 3) new matter in application publications can be resolved by ordering and reviewing the file of the prior application(s) or patent(s).
- _Same application – publication and patent disclosures differ:_ A redacted application publication and the patent derived from the same application may be different.  For example, the patent may contain additional disclosure (e.g. best mode) which is not contained in the application publication.

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Comparison Chart of Prior Art References: Pre-AIPA § 102(e) vs. Current (Post-AIPA § 102(e))

***  **IA must designate the U.S. and be published in English under PCT Article 21(2)

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language

- When  a US patent or US application publication is based on an international application (PCT) filed on or after 11/29/00 but is not prior art under § 102(a)/(b), the examiner may apply the reference under § 102(e) after verifying that the IA designated the US and was published in English.
- SIRA is currently developing a WIPO Application Look Up Tool which would allow examiners to search the PCT document by international application number or by WIPO publication number.**  **
- Until the WIPO Application Look Up Tool is available, an interim way to verify whether the international application was published in English and designated the US is to locate the WIPO publications (PCT) using the family data tool available in the Derwent Database of EAST.

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued)

- Additionally, the WIPO and EPO websites have tools available to locate the WIPO publications (PCT) to verify whether the international application was published in English and designated the US.
- WIPO's PCT Database contains first page data (e.g., designations and language of publication).
- The database currently contains data published since January 1, 1997. From the WIPO site:  _http://ipdl.wipo.int/_
- 	select “search IPDL” from Guest Access
- 	select “PCT Electronic Gazette” [Guest Access]
- From the EPO's website: _http://ep.espacenet.com_
- 	select "Worldwide - 30 million documents”
- If you select "The World Intellectual Property Org. (PCT)“, access to only the latest 24 months data is provided.

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued)

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued)

- APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language *(continued)*

**Ex. 1: Finding PCT/SE00/01287 using BRS/EAST.**
- Using the Derwent database, text search and browse application publication No. (e.g., 20020052584).  Select Family Data from the the main menu of the EAST Browser (Tools -> text viewer -> Family Data).
- EAST will automatically retrieve any available family data in a new browser (similar to forward and backward citation searches).
- The detail view will list the WO document if it is retrieved by EAST (see next slide).

**102(e) date**

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued)

**Ex. 1** *(cont.):* Detail View in EAST showing Family Data

- IA of U.S. application publication

**US designated**

**IA filing date prior to 11/29/00**

**Best prior art date for this disclosure is the Swedish application’s publication date: 30 Dec 2000 under § 102(a)/(b) date**

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued)

** ****26 Sep 2002**

**IA filed in Israel,**
** ****US designated**

**§ 111(b) appl.  filed in US**

**US publication of IA under  § 122(b)**

**    ****11/29/00**

**14 Jan 2001**

**14 Jan 2000**

**Ex. 2:  **If the PCT was published by WIPO in English (see next slide) the **§** 102(e)(1) date of the US application publication and the WIPO publication is 14 Jan 2000, assuming there is proper support for the claimed subject matter in the § 111(b) provisional  appl.

**WIPO Publication**

**19 July 2001**

- § 102(e) after HR 2215

- November 14, 2002

## APPENDIX: Finding WIPO publications and determining IA filing date, US designation and publication language (continued)

- Ex. 2 *(cont.):*  Because the US application publication is based on an international application (PCT) filed on or after 11/29/00, published in English and the IA designated the US, the examiner may apply the reference under **§** 102(e)(1) as of :
- 14 January 2000*
- * assumes proper support for the claimed subject matter in the § 111(b) provisional  application.

- § 102(e) after HR 2215

- November 14, 2002

## 1. If U.S. patent or U.S. application publication issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest U.S. effective filing date. See Examples A1A, A1B, P1.
2. If the U.S. patent, U.S. application publication, or WIPO publication issued from, or claims benefit to, an IA which has an international filing date on or after 11/29/00, designated the United States, and was published in English by WIPO (under PCT Article 21(2)) the § 102(e) date is the international filing date, or any earlier effective U.S. filing date.
See examples A2A–A2C and P2A-P2C. 
3. If the U.S. patent issued from, or claims benefit to, an IA which was filed on or after 11/29/00, but the WIPO publication was not in English, the U.S. patent:  if issued from the 35 USC § 371 application, has no § 102(e)(2) date, or if issued from a U.S. continuing application claiming benefit of the IA, has the § 102(e)(2) date of the filing date of a later-filed continuing U.S. application
	See Examples P3A-P3C.

- 2. If** **the** **_U.S. patent, U.S. application publication, or WIPO publication_ issued from, or claims benefit to, an IA which has an _international filing date on or after 11/29/00_, _designated_ the United States, and was published in _English_ by WIPO (under PCT Article 21(2)) the **§ 102(e) date is the international filing date, or any earlier effective U.S. filing date****.**
- See examples A2A–A2C and P2A-P2C.
- 3. If** **the** **_U.S. patent_ issued from, or claims benefit to, an IA which was filed _on or after 11/29/00_, but the WIPO publication was _not in English_, the U.S. patent**:  **if issued from the 35 USC § 371 application, has _**no**__ § 102(e)(2) date_, or _if issued from a U.S. continuing application claiming benefit of the IA,_ has the § 102(e)(2) date of _the filing date of a later-filed continuing U.S. application_
- 	See Examples P3A-P3C.

- APPENDIX:  Applying § 102(e) Prior Art Date for Publications & Patents _Five Guidelines _(Positive 1, 2 & 3 and Negative 4 & 5)

- § 102(e) after HR 2215

- November 14, 2002

## 4. The publication of the IA (either a WIPO publication or a US publication of a NS application) is not considered prior art under § 102(e)(1) as of the IA filing date if any of the following conditions are true:
            1) The international filing date was prior to 11/29/00,
	 2) The IA did not designate the U.S., or  
	 3) The WIPO publication of the IA was not in English. 
      Since the IA filing date is not considered a U.S. filing date for prior art purposes, any earlier U.S. filing dates for which benefit is claimed by the IA are not prior art dates. See Examples A4A-A4C.
5. If the U.S. patent issued from, or claims benefit to, an IA filed prior to Nov. 29, 2000, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of a later-filed U.S. application that claimed the benefit of the international application. See § 102(e) prior to AIPA (slide 27) & effective date provision (§ 4508) of AIPA (slide 11). See Examples P5A-P5C.

-             1) The international filing date was _**prior**_ to 11/29/00,
- 	 2) The IA did _not designate_ the U.S., _or_
- 	 3) The WIPO publication of the IA was _**not**__ __in English._
-       Since the IA filing date _is not_ considered a U.S. filing date for prior art purposes, any earlier U.S. filing dates for which benefit is claimed by the IA are not prior art dates. See Examples A4A-A4C.
- 5. If** **the _U.S. patent_ issued from, or claims benefit to, an IA filed _**prior**_ to_ Nov. 29, 2000_, the date of such a prior art patent is the earlier of the date of compliance with § 371(c)(1), (2) and (4) (e.g. National Stage entry) or the filing date of a later-filed U.S. application that claimed the benefit of the international application. See § 102(e) prior to AIPA (slide 27) & effective date provision (§ 4508) of AIPA (slide 11). See Examples P5A-P5C.

- Applying 102(e) Prior Art Date for Publications & Patents _Five Guidelines _*continued*

- § 102(e) after HR 2215

- November 14, 2002

## Appendix Listing of All Examples

- A1A, A1B* ...................	U.S. or WIPO Publications applying § 102(e) using guideline 1.
- P1*.............................	U.S. Patent applying § 102(e) using guideline 1
- A2A*-A2C*, P2A-P2C*...	U.S. or WIPO Publications and Patents applying § 102(e) using 			guideline 2.
- P3A, P3B, P3C*  ............	U.S. Patents applying § 102(e) using guideline 3.
- A4A, A4B, A4C ...............U.S. or WIPO Publication applying § 102(e) using guideline 4.
- P5A, P5B, P5C*  ............	U.S. Patents following applying § 102(e) using guideline 5.
_**Representative CODE Definitions**_
- A1A = 	application publication, guideline 1, example 1
- A3D =	application publication, guideline 3, example 4
- P5B = 	patent, guideline 5, example 2
- * example is provided in the Appendix

- § 102(e) after HR 2215

- November 14, 2002

## EX. A1B. PUBLICATION OF § 111(a) APPLICATION WITH § 120 BENEFIT CLAIM and § 119(a)-(d) PRIORITY CLAIM TO A FOREIGN APPLICATION

**EX. A1B**. _**PUBLICATION**_** **OF § 111(a) APPLICATION WITH § 120 BENEFIT CLAIM and § 119(a)-(d) PRIORITY CLAIM TO A FOREIGN APPLICATION

**U.S. application publication § 102(e)(1) date: 28 May 1999**
**	****No benefit of the foreign application is given for § 102(e).**
**	****(*****In re Hilmer*****, 149 USPQ 480 (CCPA 1966)).**

**3****rd **** 111(a) application filing date**

**1****st**** § 111(a) filing date**

**1****st**** foreign application filing date**

***Sample Application Publication – Guideline 1***

- If _U.S. patent or application publication_ issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest U.S. effective filing date.

- § 102(e) after HR 2215

- November 14, 2002

## EX. A1B. PUBLICATION OF § 111(a) APPLICATION WITH § 120 BENEFIT CLAIM and § 119(a)-(d) PRIORITY CLAIM TO A FOREIGN APPLICATION

**EX. A1B**. _**PUBLICATION**_** **OF § 111(a) APPLICATION WITH § 120 BENEFIT CLAIM and § 119(a)-(d) PRIORITY CLAIM TO A FOREIGN APPLICATION

**3rd § 111(a) application filed**
**under 37 CFR 1.53(b) or (d) with **
**§ 120 priority claim**

**22 Jan 2002**

** ****14 Mar 2002**

**1st § 111(a) appl. filed claiming****§ 119(a)-(d) priority to Japanese application**** **

**Foreign appl. filed in Japan**

**Publication by U.S. of the 3****rd**** § 111(a) appl.  under § 122(b)**

**    ****11/29/00**

**28 May 1999**

**29 May 1998**

- Sample Timeline – Guideline 1

**2nd § 111(a) appl. filed**
**under 37 CFR 1.53(b) or (d) with § 120 priority claim**

**20 June 2000**

- § 102(e) after HR 2215

- November 14, 2002

**	****	****§ 102(e)(2) date of patent:  19 May 1999**

**Ex. P1: **_**PATENT**_** DERIVED FROM AN APPLICATION FILED UNDER             § 111(a) WITH § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS**

- If _U.S. patent or application publication_ issued from an application under 35 USC § 111(a), and the patent or application does not claim a benefit of an IA, the patent or application publication has a § 102(e) prior art date as of the earliest U.S. effective filing date.

*Sample Patent – Guideline 1*

**Filing date of 1****st**** §111(a) appl.**

**Filing date of 2****nd**** §111(a) appl.**

- § 102(e) after HR 2215

- November 14, 2002

** ****19**** May 1999**

**   ****27 Dec 2000**

** ****24 Sept 2002**

**2nd application, filed under****§ 111(a), claiming the benefit or priority of the prior application under § 120/119(e)**** **

**1st § 111(a)/(b) application filed before effective date**

**Patent** **granted on 2nd appl.**

-     11/29/00

**        **

**Ex. P1: **_**PATENT**_** DERIVED FROM AN APPLICATION FILED UNDER             § 111(a) WITH § 120 OR § 119(e) PRIORITY/BENEFIT CLAIMS**

- Sample Timeline – Guideline 1

- § 102(e) after HR 2215

- November 14, 2002

## Sample Timeline – Guideline 2

**IA filed in Sweden, designating **
**the US**** **

**U.S. appl. publication of NS under § 122(b)**

**National Stage (NS) fulfilling § 371(c)(1), (2), and (4)**

**WIPO publication of IA in English under PCT Art. 21(2)**

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Nov 2003**

** ****01 July 2002**

- 11/29/00

- § 102(e) after HR 2215

- November 14, 2002

## Sample Timeline – Guideline 2

**IA filed in Sweden, desig. **
**the US**** **

**U.S. appl. publication of****§ 111(a) appl. under § 122(b)**

**§ 111(a) appl. filed claiming benefit of the IA under 35 USC  § 365(c)**

**WIPO publication of IA in English under PCT Art. 21(2) **

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Nov 2003**

** ****01 July 2002**

- 11/29/00

- § 102(e) after HR 2215

- November 14, 2002

## Sample Timeline – Guideline 2

**IA filed in Sweden, desig. **
**the US, claims priority of  ****§ 111(b) application**** **

**U.S. appl. publication of ****§ 111(a) appl.  under § 122(b****)**

**§ 111(a) application filed claiming benefit of the IA  and priority of the § 111(b) application under 35 USC §§ 365(c) and 119(e)**

**WIPO publication of IA in English under PCT Art. 21(2). **

** ****01 July 2000**

** ****01 July 2003**

** ****01 Nov 2003**

** ****01 Jan 2002**

- 11/29/00

** ****01 July 2001**

**§ 111(b) application filed in Swedish before effective date (37 CFR 1.78)**

- § 102(e) after HR 2215

- November 14, 2002

## Sample Timeline – Guideline 2

**Patent granted on § 371 application**

**§ 371 (c)(1), (2) and (4) fulfillment**

**IA filed in Sweden (in Swedish) US designated**

** **

** ****01 Jun 2003**

** ****01 Nov 2003**

** ****01 Jan 2001**

- 11/29/00

**Ex. P2C: **_**PATENT**_** DERIVED FROM THE NATIONAL STAGE OF AN IA (§ 371 APPLICATION) FILED ON/AFTER 11/29/00 **

** ****01 July 2002**

**WIPO publication of IA **_***in English***_

** ****01 July 2003**

**U.S. appl. publication  under § 122(b)**

- If** **the** **_U.S. patent, U.S. application publication, or WIPO publication_ issued from, or claims benefit to, an IA which has an _international filing date on or after 11/29/00_, _designated_ the United States, and was published in _English_ under PCT Article 21(2), the **§ 102(e) date is the international filing date, or any earlier effective U.S. filing date.**

- § 102(e) after HR 2215

- November 14, 2002

## Ex. P3C: PATENT DERIVED FROM THE NS OF AN IA (§ 371 APPL.)  FILED ON/AFTER 11/29/00, WIPO PUBLICATION NOT IN ENGLISH 	

**Ex. P3C: **_**PATENT**_** DERIVED FROM THE NS OF AN IA (§ 371 APPL.)  FILED ON/AFTER 11/29/00, WIPO PUBLICATION NOT IN ENGLISH ****	**

**Patent granted on § 371 application**

**§ 371 (c)(1), (2) and (4) fulfillment**

**IA filed, US designated**

** **

** ****01 Jun 2003**

** ****01 Nov 2003**

** ****01 Jan 2001**

- 11/29/00

** ****01 July 2002**

**WIPO publication of IA  **_***NOT***_** **_***in English***_

** ****01 July 2003**

**Publication by U.S. of § 317 appl. under ****§ 122(b)**

- Guideline 3.  If** **the** **_U.S. patent_ or _U.S. application publication_ issued from, or claims benefit to, an IA which was filed _on or after 11/29/00_, but the WIPO publication was _not in English _the U.S. patent** **or application publication**: **if issued from the 35 USC § 371 application has _**no**__ § 102(e) date_, or _if issued from a U.S. continuing application claiming benefit of the prior IA_ has the § 102(e) date of _the filing date of a later-filed continuing U.S. application_

**Sample Timeline – Guideline 3**

- § 102(e) after HR 2215

- November 14, 2002

## The End

- For contact and web site information, see slide 38.

- § 102(e) after HR 2215

- November 14, 2002