`
`The § 102(b) Foreign Filing Catch Law360
`
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`The § 102(b) Foreign Filing Catch
`
`Law360, New York (January 8, 2009, 12:00 AM EST) Patentees who intend to rely on a foreign
`filing for a priority date in the United States should beware — when it comes to 35 U.S.C. § 102(b)
`( “§ 102(b)”), patentees can only rely on a date of filing in the United States.
`
`In U.S. patent law, a foreign priority date is generally as good as a United States filing date.
`However, § 102(b) is a clear exception. The § 102(b) catch means that a delay in filing in the
`United States can turn a 35 U.S.C. § 102(a) (“§ 102(a)”) reference that a patentee could swear
`behind into a § 102(b) reference that cannot be overcome.
`
`Consider the following classic § 102 scenario. An inventor invents a new widget on Jan. 1, 2007.
`One month later, on Feb. 1, 2007, a third party publishes a paper that describes an almost
`identical widget. On March 1, 2007, the inventor files a patent application claiming the widget in
`the United States. The timeline for this scenario looks like this:
`
` Jan. 1, 2007: Inventor invents a widget.
`
` Feb. 1, 2007: Third party publishes a paper describing the same widget.
`
` March 1, 2007: Inventor files a patent application claiming the widget in the United States.
`
`During prosecution, the inventor’s application is rejected based on the third party’s paper.
`
`Because the inventor filed his application within one year of the publication of the paper, the paper
`is a § 102(a) reference, not a § 102(b) reference, and the inventor can swear behind it based on
`his invention date of Jan. 1, 2007. This is the classic case of an inventor overcoming a § 102
`rejection.
`
`Now consider a slightly different scenario. Instead of filing in the United States on March 1, 2007,
`the inventor files in Germany on March 1, 2007.
`
`The inventor then files a patent application claiming the widget in the United States (or files a PCT
`application designating the United States) on March 1, 2008, with priority based on the German
`application under 35 U.S.C. § 119 (“§ 119”). In this scenario, the timeline looks like this:
`
` Jan. 1, 2007: Inventor invents a widget.
`
` Feb. 1, 2007: Third party publishes a paper describing the same widget.
`
` March 1, 2007: Inventor files a patent application in Germany claiming the widget.
`
` March 1, 2008: Inventor files a patent application claiming the widget in United States, with
`priority based on the German application under § 119.
`
`This time, the rejection cannot be overcome. Although the inventor filed in Germany within one
`year of the publication of the third party paper, he did not file in the United States until more than
`a year after the publication. Therefore, the paper is a § 102(b) reference, and the inventor cannot
`swear behind it.
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`The § 102(b) Foreign Filing Catch Law360
`This result comes from the text of § 102(b). Section 102(b) states that a person shall be entitled
`to a patent unless “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 [emphasis added].”
`
`Section 119 further confirms the requirements of § 102(b). In general, if a United States patent
`application is filed within one year of a foreign application and the United States patent application
`claims priority to the foreign application under § 119, the United States application will be treated
`as if it had been filed at the time the foreign application was filed. However, § 119 states one very
`important exception:
`
`No patent shall be granted on any application for patent for an invention which had been patented
`or described in a printed publication in any country more than one year before the date of the
`actual filing of the application in this country, or which had been in public use or on sale in this
`country more than one year prior to such filing.
`
`Thus, § 119 reiterates that the relevant date for § 102(b) is the actual filing date of the application
`in the United States.
`
`This stands in contrast to § 119(e)(1)’s rule of priority from provisional applications, which states
`that a United States application claiming priority to a United States provisional application has the
`same effect as if it was filed on the date the provisional was filed, with no exceptions.
`
`What matters is where the application is filed, not what kind of application is filed. Therefore,
`provisional applications can be an inexpensive way to preserve rights in the United States.
`
`The focus of § 102(b) on the date of filing in the United States, rather than priority date, can
`sometimes lead to strange results. Consider the following scenario.
`
`An inventor invents a new widget on Jan. 1, 2004. A month later, on Feb. 1, 2004, a third party
`files a patent application in the United States describing an identical widget. On March 1, 2004, the
`third party publishes a paper describing the widget. On April 1, 2004, the inventor files a patent
`application claiming the widget in Japan.
`
`One year later, on April 1, 2005, the inventor files an application claiming the widget in the United
`States (or a PCT application designating the United States), with priority based on the Japanese
`application under § 119. Here is the timeline for this scenario:
`
` Jan. 1, 2004: Inventor invents widget.
`
` Feb. 1, 2004: Third party files a patent application describing the same widget.
`
` March 1, 2004: Third party publishes a paper describing the same widget.
`
` April 1, 2004: Inventor files a patent application in Japan claiming the widget.
`
` April 1, 2005: Inventor files a patent application in the United States claiming the widget, with
`priority based on the Japanese application under § 119.
`
`The United States application is rejected based on the third party patent application filed on Feb.
`1, 2004 and the third party paper published a month later.
`
`The third party patent application is a § 102(e) reference, and the inventor can overcome it by
`swearing behind it based on his invention date of Jan. 1, 2004.
`
`However, the third party paper published a month later is a § 102(b) reference because the
`inventor did not file in the United States within a year of publication of the paper.
`
`The fact that the inventor filed in Japan within a year of the publication of the paper will not keep
`the reference from being a § 102(b) reference. The inventor cannot swear behind the § 102(b)
`reference, even though he was able to swear behind the earlier § 102(e) reference.
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`The takehome message: United States patent law has gradually eliminated many distinctions
`between activities occurring in foreign countries and activities occurring in the United States.
`
`For example, during interferences, foreign inventive activities are afforded the same status as
`United States inventive activities.
`
`However, one significant distinction between foreign activity and United States activity remains.
`The relevant date for overcoming a § 102(b) rejection is not the priority date of a filing in any
`country, but instead the date the application was filed in the United States.
`
`When relevant § 102(b) events are known, it is easy to ensure that a timely filing (i.e., a filing
`within a year of the date of publication, public use, or sale), is made in the United States.
`However, not all § 102(b) events will be known. It is these hidden uses, publications, and sales
`that the practitioner must protect against.
`
`Because there is always the possibility that a hidden § 102(b) event has occurred, the safest
`course is to file a provisional application in the United States before, or concurrent with, any
`foreign applications.
`
`While a United States provisional application will not preserve foreign rights in light of a prior
`publication, it is an inexpensive way to preserve United States rights in light of a prior publication.
`
`Securing an early United States filing date through a provisional application can prove invaluable
`when hidden uses, publications and sales are discovered during prosecution in the United States.
`
`By Birgit Millauer (pictured) and Elspeth Simpson White, Fish & Richardson PC
`
`Birgit Millauer is a principal with Fish in the firm's Silicon Valley office. Elspeth Simpson White is
`an associate with the firm in the Silicon Valley office.
`
`The opinions expressed are those of the authors and do not necessarily reflect the views of
`Portfolio Media, publisher of Law360.
`
`All Content © 20032016, Portfolio Media, Inc.
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