MPEP 2135
Pre-AIA 35 U.S.C. 102(d)

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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2135    Pre-AIA 35 U.S.C. 102(d) [R-11.2013]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions.]

Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

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  • (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

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   GENERAL REQUIREMENTS OF 35 U.S.C. 102(d)

Pre-AIA 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a bar against the granting of a patent in this country:

  • (A) The foreign application must be filed more than 12 months before the effective U.S. filing date (See MPEP § 706.02 regarding effective U.S. filing date of an application);
  • (B) The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns.
  • (C) The foreign patent or inventor’s certificate must be actually granted (e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published.
  • (D) The same invention must be involved.

If such a foreign patent or inventor’s certificate is discovered by the examiner, the rejection is made under pre-AIA 35 U.S.C. 102(d) on the ground of statutory bar. See MPEP § 2135.01 for further clarification of each of the four requirements of pre-AIA 35 U.S.C. 102(d).