# Presentation: 673172

## Training Slides on the Changes to:	I. 35 U.S.C. § 103(c)	II. 35 U.S.C. §§ 102(e) and 374made by the American Inventors Protection Act of 1999 (AIPA)

- Bob Spar, Director of the Office of Patent Legal Administration (OPLA)
- (703) 308-5107				Bob.Spar@USPTO.gov

## I. Training Slides on the Changes to 35 U.S.C. § 103(c) made by the AIPA

- Rob Clarke, Legal Advisor, OPLA
- 	(703) 305-9177	Robert.Clarke@USPTO.gov
- Jeanne Clark, Legal Advisor, OPLA
- 	(703) 306-5603	Jeanne.Clark@USPTO.gov

## Exclusion of commonly owned or assigned prior art under 35 U.S.C. § 103(c)

- Applies to all applications **filed on or after November 29, 1999**
- The AIPA amended 35 U.S.C. § 103(c) to add that subject matter that only qualifies as prior art under 35 U.S.C.          § 102(e) (in addition to § 102(f) or (g)) and that is commonly owned, or subject to an obligation of assignment to the same person, at the time the invention was made cannot be applied in a rejection under 35 U.S.C. § 103(a).

## Exclusion of commonly owned or assigned prior art under 35 U.S.C. § 103(c)

- Applicant(s) must supply evidence of common ownership, or an obligation of assignment to the same person, at the time the invention was made
- A second OG Notice, 1241 OG 96 (Dec. 26, 2000), sets forth the following revised policy:
- applications and references (whether patents, patent applications, patent application publications, etc.) will be considered to be owned by, or subject to an obligation of assignment to, the same person, at the time the invention was made, if the applicant(s) or the attorney or agent of record makes a **statement** to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person.
**Thus, a statement, by itself, will be sufficient evidence**

## Exclusion of commonly owned or assigned prior art under 35 U.S.C. § 103(c)/102(e)

- The first O.G. Notice, 1233 OG 54 (Apr 11, 2000), indicated:
- Filing of a continuing application or a continued prosecution application (CPA) on or after Nov. 29, 1999 would qualify the application for the benefit of new § 103(c)/102(e) exclusion of common assignee type prior art
- but the filing of a request for continued examination (RCE) would not qualify the application for the exclusion if the application was filed prior to Nov. 29, 1999
- Filing of a reissue application on or after Nov. 29, 1999 would qualify the reissue application for the benefit of the new § 103(c)/102(e) exclusion of common assignee type prior art
- but recapture may be a bar

## II. Training Slides on the Changes to 35 U.S.C. §§ 102(e) and 374 made by the AIPA

- Pre & Post-AIPA Prior Art Dates
- 	vis-à-vis the application being examined.............. Slides 7-14
- Chart of Pre & Post-AIPA § 102(e) Prior Art Dates............Slide   15
- Examples involving
- 	Application Publications, Ex’s. A1-A9...............Slides 17-25
- 	Patents, Ex’s. P1-P7......................................Slides 26-32
- Effects of Voluntary Publication...................................Slides 33-36
- Statutory Language.................................................Slides 37-39
- Information Contacts ...............................................Slide   40

## Post-AIPA 35 U.S.C. §§ 102(e) and 374 

- 1. U.S. **Publications** of nonprovisional (§ 111(a)) applications
- 	(including voluntary publications) under § 102(e)(1);
- 2. U.S. **Publications** of the National Stage (§ 371) of International
-     Applications (including voluntary publications) under § 102(e)(1);
- 3. World Intellectual Property Organization (WIPO) **Publications** of
-     International Applications (IAs) under §§ 374 and 102(e)(1); and
- 4. **Patents** granted in the U.S under § 102(e)(2).
_**Two Questions that must be asked:**_
- 1.  Is the patent application being examined subject to prior art under pre-AIPA § 102(e) or post-AIPA § 102(e)?
- 2.  Depending on the answer above, what is the pre-AIPA § 102(e) prior art date, or post-AIPA § 102(e) prior art date, of the reference?

- Post-AIPA 35 U.S.C. §§ 102(e) and 374

## Q1. Is the patent application being examined subject to pre-AIPA § 102(e) or post-AIPA § 102(e)? 

- A. The following applications and reexaminations are subject to prior art under **post-AIPA § 102(e)**:
- utility, design and plant patent **applications** under 35 U.S.C. § 111(a), **filed on or after November 29, 2000** or **voluntarily published** pursuant to 35 U.S.C. § 122(b), including:
- first filed applications
- continuing applications under 37 CFR 1.53(b)
- continued prosecution applications (CPAs) under 37 CFR 1.53(d)
- reissues
- National Stage of International Applications, complying with 35 U.S.C. § 371(c), that have **international** **filing dates on or after November 29, 2000** or were **voluntarily published** pursuant to 35 U.S.C. § 122(b)
- reexaminations of patents issued from the above-mentioned applications
- B. The following applications and reexaminations are subject to prior art under **pre-AIPA § 102(e)**:
- All other applications and reexamination of patents not mentioned above
- Note:  The filing of a Request for Continued Examination (RCE) under 37 CFR 1.114 on or after November 29, 2000 does not change the status of the application

## Q2: What is the post-AIPA § 102(e)(1) prior art date of a reference? U.S. Publications of Patent Applications

- 1.	A U.S. **publication** of a nonprovisional application, filed under 35 U.S.C. § 111(a), is **prior art** under post-AIPA § 102(e)(1) as of its **effective filing date**.  See examples A1-A5 (Slides 17-21).  See slides 13 and 14 for information on priority claims.**  **
- 2.	A U.S. **publication** of the National Stage (§ 371) of an International Application (IA) is **prior art** under post-AIPA § 102(e)(1) as of its **international filing date** (35 U.S.C.  § 363) **if** the International Application was published by WIPO **in English**.  See example A6 (Slide 22). See slides 13 and 14 for information on priority claims.**  **
- If the IA was not published in English, then the U.S. publication of the IA has no § 102(e)(1) effect at all.  See example A7 (Slide 23)
- First U.S. publications of patent applications will be published in March 2001
- 		Note:  Prior to the AIPA, publications of U.S. patent applications did not exist

**Notes:**
The same is true for a patent maturing from a 371 application

## Q2: What is the post-AIPA § 102(e)(1) prior art date of a reference? WIPO Publications of IAs (PCT)

- 3.	A WIPO **publication** of an IA filed on or after November 29, 2000 is **prior art** under post-AIPA § 102(e)(1) via 35 U.S.C. § 374 **as of its** **international filing date** (35 U.S.C. § 363) provided it designated the US, and was **published in English**, but AIPA § 4508 may require 35 U.S.C. § 371 fulfillment.  See example A6 (slide 22)
- See slides 13 and 14 for information on priority claims.** **
- First WIPO publications of IAs with a prior art effect under             post-AIPA § 102(e)(1) are expected in May 2001*
- Both **U.S. publications** of patent applications and WIPO** publications** of IAs will also be prior art under 35 U.S.C. § 102(a) and (b) as of their publication date.  **Prior to AIPA, WIPO publications of IAs were not prior art under § 102(e)**
- 		* 18 month publication of an IA filed on or after 29 Nov 2000 with priority
- 			claim to an earlier filed application

## Q2: What are the pre-AIPA and post-AIPA         § 102(e) prior art date(s) of a U.S Patent?

- 4. Prior art dates under pre-AIPA § 102(e) and post-AIPA § 102(e)(2) are the **same,** **except** **when** a **patent** **is issued from the National Stage** (§ 371) of an International Application **or** there is a **National Stage** (§ 371) of an International Application **in** **its continuity chain**
- This is because **post-AIPA § 102(e)(2)** **no longer recognizes the fulfillment of the requirements of 35 U.S.C. § 371(c)(1),(2) and (4) for prior art purposes**

## Q2: What are the pre-AIPA and post-AIPA         § 102(e) prior art date(s) of a U.S Patent?

**Post-AIPA § 102(e)(2)**:
-  1. A U.S. **patent** issuing from a nonprovisional application, filed under 35 U.S.C. § 111(a), is **prior art** under post-AIPA             § 102(e)(2) as of its **effective filing date**
- the same prior art effect as under pre-AIPA § 102(e) except when there is the National Stage of an International Application in its continuity chain
- 2. A U.S. **patent** issuing from the National Stage of an International Application (§ 371) applied as prior art under post-AIPA § 102(e)(2) is excluded & has no post-AIPA § 102(e)(2) prior art date at all
**Pre-AIPA § 102(e)**:
- a U.S. patent issuing from the National Stage of an International Application (§ 371) is prior art under pre-AIPA § 102(e) as of the date of fulfillment of 35 U.S.C.                 § 371(c)(1), (2) and (4)

## Q2: What is the post-AIPA § 102(e) prior art date of a reference?Benefit claims under 35 U.S.C. §§ 119(e) and 120

- Benefit claims under 35 U.S.C. § 119(e) (to prior U.S. provisional applications) and 35 U.S.C. § 120 (to prior U.S. nonprovisional applications) are relevant to determine the effective prior art date under post-AIPA § 102(e)(1) for application **publications** and under post-AIPA § 102(e)(2) for **patents**
- same prior art effect as under pre-AIPA § 102(e) for **patents**
- see examples A2-A5 (Slides 18-21) for **publications** of applications, and
- see example P2 (Slide 27) for patents

## Q2: What is the post-AIPA § 102(e) prior art date of a reference?Benefit claims under 35 U.S.C. § 365(c) to a prior International Application

- Benefit claims under 35 U.S.C. § 365(c) to a prior International Application are relevant **only under post-AIPA § 102(e)(1)**, in certain situations, to determine the effective prior art date of U.S. patent application **publications**
- For U.S. patent application **publications**,
- if WIPO** publication** of the **IA **was **in English**, the post-AIPA            § 102(e)(1) prior art date is the **IA filing date**.  See example A8 (Slide 24)
- if WIPO publication of the IA was not in English, the IA filing date is not considered under post-AIPA § 102(e)(1).  See ex. A9 (Slide 25)
- For **patents**, no benefit at all under § 102(e)(2) to the IA filing date
- See examples P3-P6 (Slides 28-31)

## Chart: Prior Art Dates of References under Pre and Post-AIPA § 102(e)

- 			_Pre-AIPA § 102(e)_	  _Post-AIPA § 102(e)_
- Publication of	   no publication existed           effective filing date
- § 111(a) appl.	   and no provision in 	       (see slides 9,13 & 14)
- (Exs: A1-A5,A8,A9)  Pre-AIPA § 102(e)
- Publication of 	   no publication existed 	    Int’l filing date
- § 371 appl.	   and no provision in 	     (see conditions on slides 9,13 & 14)
- (Exs: A6-A7)	    Pre-AIPA § 102(e)
- IA (PCT)	   publication existed	   Int’l filing date
- publication	   but no provision in	    (see conditions on slide 10)
- (Exs: A6-A7, A9)       Pre-AIPA § 102(e)
- Patent from	   effective filing	   effective filing date
- § 111(a) appl.		date		    (see slides 11-14)
- (Exs: P1,P2,P4,P6,P7)
- Patent from	§ 371(c)(1),(2)&(4)	   NONE
- § 371 appl.       fulfillment date	    (see slides 11-14)
-  (Exs: P3,P5)

## Examples showing the prior art effect of 35 U.S.C. § 102(e) on: I.  Application Publications: Ex’s A1-A9 (Slides 17-25) II. Patents: Ex’s P1-P7 (Slides 26-32)

- These examples assume that there is no domestic priority claim to an earlier-filed U.S. application in the application being examined.  A benefit claim to an earlier U.S. filing date under 35 U.S.C. §§ 120, 121 or 365(c) may create an earlier effective filing date for the application being examined.  Therefore, examiners should check to see if the prior art date of the reference is prior to the effective filing date of the application being examined before applying the reference.  See MPEP §§ 706.02, 1893.03(b), 1893.03(c), 1895 and 1895.01.

**§ 111 (a) application filed with no claims for benefit/priority**** **

**Publication P of § 111(a) application under ****§ 122(b)**

**1. § 102(e)(1) date of publication P:  01 Jan 2001**
**	****This publication is available as prior art against:**
**	****	****(a) any application filed after 01 Jan 2001**
** **
**Explanations for this slide and following slides:**
** ****§ 111(a) application = nonprovisional application filed under 35 U.S.C. § 111(a)**
** ****§ 111(b) application = provisional application filed under 35 U.S.C. § 111(b)**
** ****11/29/00 = effective date of AIPA amendments to §§ 102(e) and 374**
** ****IA = International Application**
** ****WIPO = World Intellectual Property Organization**

** ****01 Jan 2001**

** ****01 July 2002**

**11/29/00**

**Ex. A1: **_**PUBLICATION**_** OF § 111(a) APPLICATION**
**WITH NO PRIORITY/BENEFIT CLAIMS**

** ****01 Jan 2000**

**   ****01 Jan 2001**

** ****01 Jul 2001**

**§ 111(a) application filed claiming the benefit of the prior application under § 119(e)**** **

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

**Publication P of the § 111(a) application under § 122(b)**

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

**        **

**Ex. A2: **_**PUBLICATION**_** OF § 111(a) APPLICATION**
**WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPL.**

**1. § 102(e)(1) date of publication P: 01 Jan 2000**
**      ****This publication is available as prior art against:**
**	****(a) any application filed on or after 29 Nov 2000; or**
**	****(b) any application voluntarily published that was filed**
**	****	****after 01 Jan 2000.**

** ****01 Jan 2000**

**   ****01 Jan 2002**

** ****01 Jul 2002**

**2nd § 111(a) application filed claiming the benefit of the prior application under § 120**** **

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

**Publication P of the 2nd § 111(a) application under § 122(b)**

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

**        **

**Ex. A3: **_**PUBLICATION**_** OF § 111(a) APPLICATION**
**WITH § 120 PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION**

**1. § 102(e)(1) date of publication P: 01 Jan 2000**
**     ****This publication is available as prior art against:**
**	****(a) any application filed on or after 29 Nov 2000; or**
**	****(b) any application voluntarily published that was filed**
**	****	****after 01 Jan 2000.**

** ****01 Jan 1999**

**   ****01 Jul 2003**

** ****01 Aug 2003**

**1st § 111(a) application filed claiming the benefit of the prior application under § 119(e)**** **

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

**Publication P of the 2nd         § 111(a) application under § 122(b)**

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

**       **

**Ex. A4: **_**PUBLICATION**_** OF § 111(a) APPLICATION**
**WITH § 119(e) and § 120 PRIORITY CLAIMS**

**1. § 102(e)(1) date of publication P: 01 Jan 1999**
**     ****This publication is available as prior art against:**
**	****(a) any application filed on or after 29 Nov 2000; or**
**	****(b) any application voluntarily published that was filed**
**	****	****after 01 Jan 1999.**

**31 Dec 1999**

**2nd § 111(a) application filed under 37 CFR 1.53(b) or (d), claiming benefit to prior application under §§ 120 and 119(e)**

## Ex. A5: PUBLICATION OF § 111(a) APPLICATION

** ****01 Aug 2002**

**1st § 111(a) application filed claiming the benefit of the German application under**
**§ 119(a)-(d)**

**A German application filed before 11/29/00 in Germany.**

**Publication  P of the 2nd         § 111(a) application under § 122(b)**

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

**31 Dec 1999**

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

**01 Jan 1999**

**Ex. A5: **_**PUBLICATION**_** OF § 111(a) APPLICATION**
**WITH § 119(a)-(d) BENEFIT CLAIM TO A FOREIGN APPL.**

**1. § 102(e)(1) date of publication P: 31 Dec 1999 **
**	****No benefit of the foreign application is given for § 102(e)(1) purpose.**
**	****(In re Hilmer, 149 USPQ 480 (CCPA 1966)).**
**      ****This publication is available as prior art against:**
**	****(a) any application filed on or after 29 Nov 2000; or**
**	****(b) any application voluntarily published that was filed**
**	****	****after 31 Dec 1999.**

## Ex. A6: PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN ENGLISH

- 	1.** § 102(e)(1)** **date of publication P**:  **01 Jan 2001**
**	****    ****§ 102(e)(1) date of IA publication:  01 Jan 2001**
** ****	****	****These publications are available as prior art against:**
**	****	****	****(a) any application filed after 01 Jan 2001**
**	**

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

**Publication P of NS under § 122(b)**

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

**Publication of IA in English under 21(2)(a) by WIPO**

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Aug 2003**

** ****01 July 2002**

- 11/29/00

## Ex. A7: PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

- 1. **§** **102(e)(1) date of publication P:** **none**
**	**** ****§ 102(e)(1) date of WIPO publication of PCT :** **none**
**	****	****because the PCT was not published in English.**
** ****Note: Both publications are available as prior art under**
**	****	****	****§ 102(a) or (b) as of their publication dates.**

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

**Publication P of NS under § 122(b)**

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

**Publication of IA in German under PCT 21(2)(a) by WIPO**

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Aug 2003**

** ****01 July 2002**

- 11/29/00

## 	     This publication is available as prior art against:

- 	1.** § 102(e)(1)** **date of publication P**:  **01 Jan 2001**
**	****     ****This publication is available as prior art**** ****against:**
**	****	****	****(a) any application filed after 01 Jan 2001**
**	**

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

**Publication P of § 111(a) application under § 122(b)**

**§ 111(a) application filed claiming benefit of the IA application under 35 U.S.C.  § 365(c)**

**Publication of IA in English under 21(2)(a) by WIPO**

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Aug 2003**

** ****01 July 2002**

- 11/29/00

## Ex. A9: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH

- 1.** §** **102(e)(1) date of publication P:** **01 July 2003**
**	**** ****§ 102(e)(1) date of WIPO publication of PCT :** **none**
**	****	****because the PCT was not published in English.**
** ****Note: Both publications are available as prior art under**
**	****	****	****§ 102(a) or (b) as of their publication dates.**

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

**Publication P of § 111(a) application under § 122(b)**

**§ 111(a) application filed claiming benefit of the IA application under 35 U.S.C.             § 365(c)**

**Publication of IA in German under PCT 21(2)(a) by WIPO**

** ****01 Jan 2001**

** ****01 July 2003**

** ****01 Aug 2003**

** ****01 July 2002**

- 11/29/00

** ****01 Jan 2000**

** **

** ****01 Dec 2002**

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

**Patent** **granted**

-     11/29/00

**        **

**1. Post-AIPA § 102(e)(2) date of the patent: 01 Jan 2000**
**     ****This patent is available as prior art against: **
**	****(a) any application filed on or after 29 Nov 2000; or**
**	****(b) any application filed after 01 Jan 2000 and before**
**	****      ****29 Nov 2000, which has been voluntarily published.**
**2. Pre-AIPA § 102(e) date of patent: 01 Jan 2000**
**     ****This patent is available as prior art against any application filed**
**      ****after 01 Jan 2000 and before 29 Nov 2000, which has not been published.**
**       ****Note: post-AIPA § 102(e)(2) and pre-AIPA § 102(e) dates are the same.**

**Ex. P1: **_**PATENT**_** DERIVED FROM AN APPLICATION FILED UNDER**
**§ 111(a) WITH NO PRIORITY/BENEFIT CLAIMS**

** ****01 Jan 2000**

**   ****01 Jan 2001**

** ****01 Dec 2002**

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

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

**Patent** **granted on 2nd application**

-     11/29/00

**        **

**1. Post-AIPA § 102(e)(2) date of the patent: 01 Jan 2000**
**     ****This patent is available as prior art against: **
**	****(a) any application filed on or after 29 Nov 2000; or**
**	****(b) any application filed after 01 Jan 2000 and before**
**	****      ****29 Nov 2000 which has been voluntarily published.**
**2. Pre-AIPA § 102(e) date of patent: 01 Jan 2000**
**    ****This patent is available as prior art against any application filed after**
**   ****01 Jan 2000 and before 29 Nov 2000 which has not been voluntarily published.**
**Note: post-AIPA § 102(e)(2) and pre-AIPA § 102(e) dates are the same.**

**Ex. P2: **_**PATENT**_** DERIVED FROM AN APPLICATION FILED UNDER             § 111(a) WITH § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS**

## Ex. P3: PATENT DERIVED FROM THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION

**	****	****The patent is usable under § 102(a) or (b) with a prior art date of 01 Nov 2000.**
**	****2. Pre-AIPA § 102(e) date of the patent: 01 Jun 2000**
**	****	****This patent is available as prior art against any application filed after**
**	****	****01 Jun 2000 but prior to 29 Nov 2000 which has not voluntarily published.**
-     **Notes: (1) There is no date under post-AIPA § 102(e)(2) while there is a date under the**
**	****	****	****	****pre-AIPA § 102(e).**
- 		**	****(2) WIPO publication § 102(a) or (b) date is 01 Jul 1999 but no post-AIPA**
**	****	****	****§ 102(e)(1) date since it was filed prior to the eff. date for the § 374 amendment.**

**Patent granted on § 371 application**

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

**IA filed, US designated**

** **

** ****01 Jun 2000**

** ****01 Nov 2000**

** ****01 Jan 1998**

- 11/29/00

**Ex. P3: **_**PATENT**_** DERIVED FROM THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION**

** ****01 July 1999**

**IA publication by WIPO**

## Ex. P4: PATENT DERIVED FROM § 111(a) CONTINUATION OF AN INTERNATIONAL APPLICATION

**	****1. Post-AIPA § 102(e)(2) date of the patent: 01 Jan 1999****    This patent is available as prior art against: **	**(a) any application filed on or after 29 Nov 2000; or****	****(b) any application voluntarily published that was filed after 01 Jan 1999.****2. Pre-AIPA § 102(e) of the patent:  01 Jan 1999****	****This patent is available as prior art against any application filed after****	****01 Jan 1999 but prior to 29 Nov 2000 that has not published.** **Note :  The post-AIPA § 102(e)(2) date and the pre-AIPA § 102(e) date are the same.**

** ****01 Jan 1998**

** ****01 Jan 1999**

** ****01 Nov 2000**

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

**IA filed**, **US was designed**

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

- 11/29/00

**Ex. P4: **_**PATENT**_** DERIVED FROM § 111(a) CONTINUATION OF AN INTERNATIONAL APPLICATION**

## Ex. P5: PATENT DERIVED FROM THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION WHICH CLAIMS BENEFIT TO A U.S. APPLICATION

**	****2. Pre-AIPA § 102(e) date of the patent: 01 Apr 2000**
**	****	****This patent is available as prior art against any application filed after**
**	****	****01 Apr 2000 but prior to****	****29 Nov 2000 which has not voluntarily published.**
-     **Notes: (1) There is no Post-AIPA § 102(e)(2) date while there is a date under pre-AIPA**
**	****	****	****	****§ 102(e).**
**	****	****	****(2) IA publication has a § 102(a) or (b) date of 01 May 1999 but no § 102(e)(1)**
**	****	****	****	****date since it was filed prior to the effective date for the amendment to § 374.****	**

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

**Patent granted on § 371 application**

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

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

** ****01 Nov 1997**

** ****01 Apr 2000**

** ****01 Nov 2001**

** ****31 Oct 1998**

- 11/29/00

**Ex. P5: **_**PATENT**_** DERIVED FROM THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION WHICH CLAIMS BENEFIT TO A U.S. APPLICATION**

** ****01 May 1999**

**IA publication by the WIPO**

## Ex. P6: PATENT DERIVED FROM § 111(a) APPLICATION WHICH CLAIMS BENEFIT TO PRIOR INTERNATIONAL APPLICATION AND U.S. APPLICATION

**	****2. Pre-AIPA § 102(e) date of the patent: 01 Apr 2000**
**	****	****This patent is available as prior art against any application filed after**
**	****	****01 Apr 2000 but prior to****	****29 Nov 2000 that has not voluntarily published.**
-     **Note: The post-AIPA § 102(e)(2) date and the pre-AIPA § 102(e) are the same.**

**§ 111(b) application**
**filed**

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

**§ 111(a) application filed claiming benefit of both the prior IA application and the § 111(b) application**

**IA filed, with priority claim, US designated**

** ****01 Nov 1998**

** ****01 Apr 2000**

** ****01 Aug 2001**

** ****31 Oct 1999**

- 11/29/00

**Ex. P6: **_**PATENT**_** DERIVED FROM § 111(a) APPLICATION WHICH CLAIMS BENEFIT TO PRIOR INTERNATIONAL APPLICATION AND U.S. APPLICATION**

## Ex. P7: PATENT DERIVED FROM § 111(a) CONTINUATION OF THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION

**	****	****      ****been voluntarily published.**
**	****2. Pre-AIPA § 102(e) date of the patent: 01 Apr 1999**
**	****	****This patent is available as prior art against any application filed after**
**	****	****01 Apr 1999 but before 29 Nov 2000 which has not voluntarily published.**
-     **Notes: (1) There is a different post-AIPA § 102(e)(2) date than the pre-AIPA § 102(e) date.**
**	****	****	****(2) IA publication has a § 102(a) or (b) date of 01 May 1998 but no § 102(e)(1)**
**	****	****	****	****date since it was filed prior to the effective date for the amendment to § 374.****	**

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

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

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

**PCT filed, designated US**

** ****01 Nov 2000**

** ****01 Apr 1999**

** ****01 Nov 2001**

** ****31 Oct 1997**

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**Ex. P7: **_**PATENT**_** DERIVED FROM § 111(a) CONTINUATION OF THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION**

** ****01 May 1998**

**IA publication by the WIPO**

## 		Effects of voluntary publication

**The following applications can request voluntary publication if pending on or after November 29, 2000:**
** ****§ 111(a) applications filed before Nov. 29, 2000,**** or **
** ****the National Stage of International Applications filed before Nov. 29, 2000**** **
**The effects of voluntary publication are as follows:**
**The application publication is a reference under § 102(e)(1) **
**The reference publication is usable against:**
**applications filed on or after Nov. 29, 2000; and**
**other applications that voluntarily publish**
**During examination, the voluntarily published application will be subject to the post-AIPA § 102(e) prior art**
**including WIPO publications of IAs filed on or after 29 Nov 2000 under     §§ 374 and 102(e)(1) if the IA designated the U.S. and the publication by the WIPO was in English (****note:**** ****National Stage entry may be required by § 4508 of the AIPA)**
**Eligible for provisional rights (AIPA § 4504)****	****	**

## How does an examiner know if an application he/she is examining has been voluntarily published?

-  Publication data will be available under a new publication link in PALM
- This new publication link is expected to be available by March 2001, in time for the publication of the first batch of U.S. patent applications
-  Examiners should check the publication information in PALM to determine if and when any application being examined, filed prior to Nov. 29, 2000, has been voluntarily published
- Once published, the application is subject to prior art under the Post-AIPA § 102(e)
- The application publication itself is available in EAST & WEST
- Currently, the application file will not indicate whether the application was published

## 		Effects of voluntary publication

- Possible situations:

- 1. Application X is properly rejected under pre-AIPA § 102(e) based on a § 371 fulfillment date of a patent issued from the National Stage of an IA.
- The applicant of application X requests voluntary publication and the application is published.
- Now, application X is subject to patentability under post-AIPA § 102(e).
- Under the post-AIPA § 102(e)(2), the reference patent no longer has a                § 102(e)(2) date.
- Therefore, the reference patent is no longer a valid prior art reference under        post-AIPA § 102(e)(2).
- Note:  The IA publication by the WIPO will most likely have a § 102(a) prior art date that is probably earlier than the pre-AIPA § 102(e) date of the patent of the national stage application.

- 2. Voluntary publication of an application with allowable claims under pre-AIPA            § 102(e) will make it subject to prior art defined by the post-AIPA § 102(e). Allowable claims may then be rejected on prior art under the post-AIPA § 102(e).

## A VOLUNTARY PUBLICATION OF AN APPLICATION AS PRIOR ART

**Voluntary publication VP of application under ****§ 122(b) via a request for publication**.

**1. § 102(e)(1)** **date of  VP is:  01 Jan 2000**
**2. This publication VP is available as prior art against:**
**	****(a) any application filed on or after 29 Nov 2000; and**
**	****(b) any application filed after 01 Jan 2000 and prior to**
**	****	****29 Nov 2000 which was voluntarily published.**** **

** ****01 Jan 2000**

** ****01 Jan 2002**

**A VOLUNTARY PUBLICATION OF AN APPLICATION AS PRIOR ART**

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## Pre-AIPA 35 U.S.C. § 102(e)

-       (e)  the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by applicant for patent, or”

*For Applications Filed before November 29, 2000 which are not Voluntarily Published:*

## Post-AIPA 35 U.S.C. § 102(e)

-       (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); or”

*For Applications Filed on or after November 29, 2000 and Applications Filed prior to November 29, 2000 which are Voluntarily Published:*

## Post-AIPA 35 U.S.C. § 103(c)

*For Applications Filed on or after November 29, 1999:*

## Information Contacts

- If you have further questions, please contact by e-mail or telephone:
- Legal Advisors in OPLA:
- 	Jeanne Clark at Jeanne.Clark@USPTO.gov or 306-5603
- 	Robert Clarke at Robert.Clarke@USPTO.gov or 305-9177
- 	Mark Polutta at Mark.Polutta@USPTO.gov or 308-8122
- Director of OPLA, Bob Spar, at Bob.Spar@USPTO.gov or 308-5107