¶ 7.12    Rejection under 35 U.S.C 102(e), Patent Application Publication or Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002

(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 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 an international application filed under the treaty defined in section 351(a)  shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2)  of such treaty in the English language.

Examiner Note:

1. This form paragraph should only be used if the reference is one of the following:

(a) a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);

(b) a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the international application has an international filing date on or after November 29, 2000.

2. In determining the 35 U.S.C. 102(e)  date, consider priority/benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), U.S. nonprovisional applications under 35 U.S.C. 120  or 121, and international applications under 35 U.S.C. 120, 121  or 365(c)  if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). Do NOT consider foreign priority claims under 35 U.S.C. 119(a) -(d) and 365(a).

3. In order to rely on an international filing date for prior art purposes under 35 U.S.C. 102(e), the international application must have been filed on or after November 29, 2000, it must have designated the U.S., and the international publication under PCT Article 21(2)  by WIPO must have been in English. If any one of the conditions is not met, the international filing date is not a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).

4. If an international application was published by WIPO in a language other than English, or did not designate the U.S., the International Application’s publication by WIPO, the U.S. publication of the national stage application (35 U.S.C. 371 ) of the international application and a U.S. patent issued from the national stage of the international application may not be applied as a reference under 35 U.S.C. 102(e). The reference may be applied under 35 U.S.C. 102(a)  or (b) as of its publication date. See form paragraphs 7.08 and 7.09.

5. If an international application was published by WIPO in a language other than English, or did not designate the U.S., the U.S. publication of, or a U.S. patent issued from, a continuing application claiming benefit under 35 U.S.C. 120, 121, or 365(c)  to such an international application, has a 35 U.S.C. 102(e)  date as of the earliest U.S. filing date after the international filing date.

6. If the reference is a U.S. patent issued directly, or indirectly, from an international application that has an international filing date prior to November 29, 2000, use form paragraph 7.12.01. In that situation, pre-AIPA 35 U.S.C. 102(e)  is applicable in the determination of the prior art date of the patent issued from such an international application.

7. If the reference is a publication of an international application (including the U.S. publication of a national stage (35 U.S.C. 371 )) that has an international filing date prior to November 29, 2000, do not use this form paragraph. Such a reference may not be applied as a prior art reference under 35 U.S.C. 102(e). The reference may be applied under 35 U.S.C. 102(a) or (b)  as of its publication date. See form paragraphs 7.08 and 7.09.

8. This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 to 7.11.