MPEP 706.02(a)(2)
Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e)

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

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706.02(a)(2)    Determining Whether To Apply Pre-AIA 35 U.S.C. 102(a), (b), or (e) [R-07.2015]

[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file provisions of the AIA as explained in 35 U.S.C. 100 (note) and MPEP § 2159. See MPEP § 706.02(a)(1) for the examination of applications subject to the first inventor to file provisions of the AIA.]

I.    PRE-AIA 35 U.S.C. 102(b)

First, the examiner should consider whether the reference qualifies as prior art under pre-AIA 102(b) because this section results in a statutory bar to obtaining a patent. If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the application (MPEP § 706.02), the reference qualifies as prior art under pre-AIA 102(b).

Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or federal holiday, the publication is not a statutory bar under pre-AIA 102(b) if the application was filed on the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) (The Board in Olah held that 35 U.S.C. 21(b) is applicable to the filing of an original application for patent and that applicant’s own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or federal holiday and the application’s U.S. filing date is the next succeeding business day.). Despite changes to 37 CFR 1.6(a)(2) and 1.10 which permit the USPTO to accord a filing date to an application as of the date of deposit as Priority Mail Express® with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant’s concurrent right to defer the filing of an application until the next business day when the last day for "taking any action" falls on a Saturday, Sunday, or federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday).

II.    PRE-AIA 35 U.S.C. 102(e)

If the publication or issue date of the reference is too recent for pre-AIA 35 U.S.C. 102(b) to apply, then the examiner should consider pre-AIA 35 U.S.C. 102(e).

Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates. The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. See MPEP § 706.02(f)(1) for examination guidelines on the application of pre-AIA 35 U.S.C. 102(e). References based on international applications that were filed prior to November 29, 2000 are subject to the "pre-AIPA" version of 35 U.S.C. 102(e) in force on November 28, 2000. See subsection III, below and MPEP § 2136.03 for additional information.

In order to apply a reference under pre-AIA 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor needs to be different for the inventive entities to be different and a rejection under pre-AIA 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

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

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  • (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 the 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; or

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Pre-AIA 35 U.S.C. 102(e) has two separate clauses, namely, pre-AIA 35 U.S.C. 102(e)(1) for publications of patent applications and pre-AIA 35 U.S.C. 102(e)(2) for U.S. patents. Pre-AIA 35 U.S.C. 102(e)(1), in combination with pre-AIA 35 U.S.C. 374, created a new category of prior art by providing prior art effect for certain publications of patent applications, including certain international applications, as of their effective United States filing dates (which include certain international filing dates). Under pre-AIA 35 U.S.C. 102(e), an international filing date which is on or after November 29, 2000 is the United States filing date if the international application designated the United States and was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language. Therefore, the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date (if all three conditions noted above are met) or an earlier U.S. filing date for which priority or benefit is properly claimed.

Publication under PCT Article 21(2) may result from a request for early publication by an applicant of an international application or after the expiration of 18-months after the earliest claimed filing date in an international application. An applicant in an international application that has designated only the U.S. continues to be required to request publication from WIPO as the reservation under PCT Article 64(3) continues to be in effect for such applicants. 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). An international filing date which is on or after November 29, 2000 is a United States filing date for purposes of determining the earliest effective prior art date of a patent if the international application designated the United States and was published in the English language under Article 21(2) by WIPO. No international filing dates prior to November 29, 2000 may be relied upon as a prior art date under pre-AIA 35 U.S.C. 102(e).

III.    "PRE-AIPA" 35 U.S.C. 102(e) AS IN FORCE ON NOVEMBER 28, 2000

"Pre-AIPA" 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent (as in force on November 28, 2000).

A person shall be entitled to a patent unless -

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  • (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

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Patents issued directly, or indirectly, from international applications filed before November 29, 2000 may only be used as prior art based on the provisions of pre-AIPA 35 U.S.C. 102(e) as in force on November 28, 2000. Thus, the pre-AIA 35 U.S.C. 102(e) date of such a prior art patent is the earliest of the date of compliance with 35 U.S.C. 371(c)(1), (2) and (4), or the filing date of the later-filed U.S. continuing application that claimed the benefit of the international application. Publications of international applications filed before November 29, 2000 (which would include WIPO publications and U.S. publications of the national stage (35 U.S.C. 371)) do not have a pre-AIA 35 U.S.C. 102(e) date at all (however, such publications are available as prior art under pre-AIA 35 U.S.C. 102(a) or (b) as of the publication date).

IV.    PRE-AIA 35 U.S.C. 102(a)

Even if the reference is prior art under pre-AIA 35 U.S.C. 102(e), the examiner should still consider pre-AIA 35 U.S.C. 102(a) for two reasons. First, if the reference is a U.S. patent or patent application publication of, or claims benefit of, an international application, the publication of the international application under PCT Article 21(2) may be the earliest prior art date under pre-AIA 35 U.S.C. 102(a) for the disclosure. Second, references that are only prior art under pre-AIA 35 U.S.C. 102(e), (f), or (g) and applied in a rejection under pre-AIA 35 U.S.C. 103(a) are subject to being disqualified under pre-AIA 35 U.S.C. 103(c) if the reference and the application were commonly owned, or subject to an obligation of common assignment, at the time the invention was made. For pre-AIA 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant’s own work.