Start Antedating 102e reference

Antedating 102e reference

Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.

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In an important case, the Federal Circuit has expanded the scope of so-called 102(e) “secret prior art.” Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application. However, the USPTO asserted that the patent should be considered 102(e) prior art because it claims priority to a U. provisional application that was filed in September 2000. In the 1968 case of , the Federal Circuit predecessor court (the CCPA) held that the 102(e) follows the prior precedent of treating a prior art disclosure found in an issued patent as being disclosed as of the “filing date of the earliest U. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.” The Federal Circuit agreed that this provision applies equally to provisional patent applications “ so long as the provisional application [provides] written description support for the claimed invention . Therefore, the Tran patent “shall have the same effect,” [Citing 119(e)] including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Namely, in the US secret 102(e) prior art is available to be combined as part of an argument for obviousness while in most European countries, the filing date of prior art is only important for novelty purposes.

2010) Giacomini’s patent application was filed on November 29, 2000. The Tran patent application was filed in December 2000 (after Giacomini) and issued in 2006. On appeal, the Federal Circuit agreed with the USPTO that the provisional filing date is the 102(e) priority date. in accordance with Section 119(e).” Giacomini never argued that the provisional failed to describe the invention found in the prior art. Note: US Court interpretations of 103(a)/102(e) offer a major difference between US practice and European practice.

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