application claiming priority to a German application.Yet, many foreign companies and law firms adversely, though unnecessarily, use inbound filing strategies that do not obtain this earliest possible 35 USC 102(e) date. application publication, or WIPO publication issues from, or claims benefit to, an IA that 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 35 USC 102(e) date is the international filing date, or any earlier effective U. This simple example clarified the benefits of the alternative filing strategy.In fact, even if the IA properly claims priority to any earlier-filed U. application (whether provisional or nonprovisional), there would still be no 35 USC 102(e) date for all the references. Moreover, if the competitor claims the same invention, then the competitor can force the foreign company into an interference, which could be quite costly and time-consuming.
First, we find that Dynamic did not waive its argument that Raymond was entitled to an earlier effective date.
The Board then found that National Graphics reduced to practice its invention by March 28, 2000, before the May 5, 2000 filing date of the Raymond patent. National Graphics also argues that, even absent a determination of waiver, the Board's decision is supported by substantial evidence because Dynamic never compared the claims of the Raymond patent to the disclosure in the provisional application.
under the reservation embodied in Patent Cooperation Treaty Article 64(4)(a). to overcome these pitfalls., 359 F.2d 859 (CCPA 1966). During the examination of the Hilmer application at the USPTO, the Examiner rejected its claims over another U. patent (the Habicht patent) based on a Swiss priority date of the Habicht patent, not the later U. filing date of the Habicht patent, because the Habicht patent’s U. filing date was later than the German application's priority date claimed by Hilmer’s application. filing date of the reference was later than the earliest effective filing date (the German priority date of the German application), the Court reversed the rejection.
This article proposes an alternative filing strategy for foreign (non-U. The court held that the reference's Swiss priority date could not be relied on in a 35 USC 102(e) rejection. Under 35 USC 102(e), the filing date of a PCT international application published in English is a prior art effective date only if it is published in English. Thus, a national stage publication filed, under 35 USC 371, on or after November 29, 2000 that was published in English under PCT Article 21(2), would obtain the benefit of the earliest possible 35 USC 102(e) date—the foreign filing date.
[FN1] protection is *550 awarded to the first inventor to file for patent protection.
Therefore, the date of interest is the effective filing date.
Because Dynamic failed to carry its burden of proving unpatentability, we affirm. As a result, it was not necessary for Dynamic to prove in its petition that Raymond was entitled to the filing date of its provisional application. We ultimately agree with National Graphics, however, that the Board's decision was supported by substantial evidence because Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. A provisional application's effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. We thus conclude that the Board's finding that Dynamic failed to prove that the Raymond patent was entitled to the filing date of its provisional application is supported by substantial evidence. Because we refer to the pre-AIA version of § 102, we do not interpret here the AIA's impact on Wertheim in newly designated § 102(d).
As discussed supra, Dynamic did not have the burden of producing evidence relating to the Raymond provisional application until after National Graphics made its argument regarding reduction to practice. Because the application for the patent at issue in this case was filed before that date, we refer to the pre-AIA version of § 102.2.
By design, patent systems provide successful applicants with property rights in their inventions and discoveries.
Each patent system must define the nature of the rights obtained, who may obtain them, the subject matter in which they may be obtained, and the criteria by which these factors are determined.
The IA must designate the United States, and be (3) File a certified English translation of the provisional application at the USPTO within sixteen months of the filing date of the provisional application or within four months of the filing of the IA (whichever is earlier). Thus, using this alternative filing strategy, the 35 USC 102(e)(1) date for the WIPO publication and the USPTO publication, as well as the 35 USC 102(e)(2) date for the patent, would all be: The proposed strategy can yield additional advantages where there are related provisional and non-provisional applications. Alternatively, if the IA claimed priority to an earlier-filed provisional application or the benefit of an earlier-filed U. nonprovisional application, the 35 USC 102(e) date for all the references would be the filing date of the earlier-filed U. application, assuming that application has proper support. The pendency of a provisional application is not included in the patent term calculation, which is an advantage over filing a nonprovisional application. Furthermore, service fees for filing provisional applications are generally much less than for filing non-provisional applications.: For example, assume that the U. provisional application in Japanese language was filed January 1, 2001, followed by an IA in the English language in the Japanese Receiving Office on January 1, 2002, claiming the benefit of the U. provisional application, followed by the submission of a certified English translation of the U. provisional in due course, and subsequently followed by filing National Stage applications in the U. There is a prior art publication such as a publication in a technical journal dated December 1, 2000 that discloses the same invention as that in the U. On the other hand, the same publication of December 1, 2000 would be an absolute bar in the U. because of the one-year "grace period" before filing in the U. By antedating the publication of December 1, 2000, the publication would be removed as prior art in the U. even though the same publication cannot be removed as prior art in Japan.