§ 2136.03
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`as of the earlier of the date of completion of the
`requirements of 35 U.S.C. 371(c)(1), (2) and (4) or
`the filing date of the later-filed U.S. application that
`claimed the benefit of the international application;
`(2) For U.S. application publications and WIPO
`publications directly resulting from international
`applications under PCT Article 21(2), never apply
`these references under 35 U.S.C. 102(e) as in force
`on November 28, 2000. These references may be
`applied as of their publication dates under pre-AIA
`35 U.S.C. 102(a) or (b);
`(3) For U.S. application publications of
`applications that claim the benefit under 35 U.S.C.
`120 or 365(c) of an international application filed
`prior to November 29, 2000, apply the reference
`under 35 U.S.C. 102(e) as in force on November 28,
`2000 as of the actual filing date of the later-filed
`U.S. application that claimed the benefit of the
`international application.
`
`Examiners should be aware that although a
`publication of, or a U.S. patent issued from, an
`international application may not be available as
`prior art under former 35 U.S.C. 102(e) as in force
`on November 28, 2000 or under pre-AIA 35 U.S.C.
`102(e), the corresponding WIPO publication of an
`international application may have an earlier
` pre-AIA 35 U.S.C. 102(a) or (b) date.
`
`III. BENEFIT OF PROVISIONAL APPLICATION
`UNDER 35 U.S.C. 119(e)
`
`The pre-AIA 35 U.S.C. 102(e) critical reference date
`of a U.S. patent or U.S. application publications and
`certain international application publications entitled
`to the benefit of the filing date of a provisional
`application under 35 U.S.C. 119(e) is the filing date
`of the provisional application with certain exceptions
`if the provisional application(s) properly supports
`the subject matter relied upon to make the rejection
`in compliance with 35 U.S.C 112(a)/ pre-AIA 35
`U.S.C. 112,
`first paragraph. See MPEP §
`706.02(f)(1), examples 5 to 9. Note that international
`applications which (1) were filed prior to November
`29, 2000, or (2) did not designate the U.S., or (3)
`were not published in English under PCT Article
`21(2) by WIPO, may not be used to reach back
`(bridge) to an earlier filing date through a priority
`or benefit claim for prior art purposes under pre-AIA
`35 U.S.C. 102(e). In addition, the reference date
`
`under pre-AIA 35 U.S.C. 102(e) of a U.S. patent
`may be the filing date of a relied upon provisional
`application only if at least one of the claims in the
`patent is supported by the written description of the
`provisional application in compliance with pre-AIA
`35 U.S.C. 112, first paragraph. See Dynamic
`Drinkware, LLC, v. National Graphics, Inc., 800
`F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015).
`
`IV. BENEFIT OF NONPROVISIONAL
`APPLICATION UNDER 35 U.S.C. 120
`
` Filing Date of U.S. Parent Application Can Only Be
`Used as the Pre-AIA 35 U.S.C. 102(e) Date If It Supports
`the Subject Matter Relied Upon in the Continuing
`Application
`
`For prior art purposes, a U.S. patent or patent
`application publication that claims the benefit of an
`earlier filing date under 35 U.S.C. 120 of a prior
`nonprovisional application (i.e., a continuation,
`divisional, or continuation-in-part application) would
`be accorded the earlier filing date as its prior art date
`under pre-AIA 35 U.S.C. 102(e), provided the
`earlier-filed application properly supports the subject
`matter relied upon in any rejection in compliance
`with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112,
`first paragraph. In other words, the subject matter
`used in the rejection must be disclosed in the
`earlier-filed application in compliance with 35
`U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first
`paragraph, in order for that subject matter to be
`entitled to the earlier filing date under pre-AIA 35
`U.S.C. 102(e).
`
`See also MPEP § 706.02(f)(1), examples 2 and 5 to
`9.
`
`V. DATE OF CONCEPTION OR REDUCTION TO
`PRACTICE
`
` Pre-AIA 35 U.S.C. 102(e) Reference Date Is the Filing
`Date, Not Date of Inventor’s Conception or Reduction
`to Practice
`
`If a reference available under pre-AIA 35 U.S.C.
`102(e) discloses, but does not claim the subject
`matter of the claims being examined or an obvious
`variant, the reference is not prior art under pre-AIA
`35 U.S.C. 102(g). Furthermore, the reference does
`not qualify as “prior art” under 35 U.S.C. 102 as of
`
`Rev. 08.2017, January 2018
`
`2100-172
`
`