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Bob Spar Director Office of Patent Legal Administration (703) 308-5107 Bob.Spar@uspto

Info on Publications of Patent Applications and Impact of Revisions made by AIPA of 1999 to 35 U.S.C. §§ 102(e) and 135(b). Bob Spar Director Office of Patent Legal Administration (703) 308-5107 Bob.Spar@uspto.gov. Prepared 4/24/02. Topics. What applications are, or are not, published?

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Bob Spar Director Office of Patent Legal Administration (703) 308-5107 Bob.Spar@uspto

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  1. Info on Publications of Patent Applications andImpact of Revisions made by AIPA of 1999 to 35 U.S.C. §§ 102(e) and 135(b) Bob Spar Director Office of Patent Legal Administration (703) 308-5107 Bob.Spar@uspto.gov Prepared 4/24/02

  2. Topics • What applications are, or are not, published? • When are the applications published? • What is the content of the publication? • Publication Volumes ? • What other application information is available after publication? • Access to the file history • Where can I search for free? • What are the prior art affects of US and WIPO publication of patent applications?

  3. What applications are published • Publication of plant and utility applications are required by 35 U.S.C. § 122(b) eighteen months from the earliest filing date claimed under title 35 eighteen-month date measured from the earliest filing date claimed under 35 U.S.C. §§ 119(a)-(d), (e), 120, 121, or 365 • The change to 35 U.S.C. § 122(b) only applies to applications filed on or after November 29, 2000 • Plant and utility applications filed before November 29, 2000 may be published pursuant to a proper request for voluntary publication

  4. What applications are not published • Exceptions to eighteen-month publication: • Applications no longer pending (e.g., abandoned) • File petition under 37 CFR 1.138(c) to expressly abandon application to avoid publication • Applications under secrecy order or whose disclosure would be detrimental to national security • Provisional applications • Design applications

  5. What applications are not published • Exceptions to eighteen-month publication (cont’d): • An applicant may request that an application not be published if • the applicant certifies that invention has not been and will not be the subject of an application filed in another country (or under international agreement) that requires eighteen-month publication • The request must be made upon filing(required by statute) • The request must be conspicuous • See PTO form PTO/SB/35 • Stats: Roughly 10% of eligible applications opt out of publication by filing such requests • Bottom-line: USPTO database of published applications does not include all applications that may later become available as prior art patents

  6. When are the applications published • A projected publication date is assigned after an application is determined to be ready for publication • Date is the Thursday following expiration of 18-months after the earliest claimed filing date, or • Date is the Thursday 15-16 weeks after the application is found to be ready for publication • Applications that claim older filing dates or which are processed in pre-examination for extended periods will be published later than the 18-month period • Bottom-line: Application publications that may have good prior art dates may be published after 18-months following the critical prior art date

  7. What is the content of the publication • Publication process: • Application is generally published as originally filed • Content based on the application at time of release to Technology Center (TC) for examination (basically “as-filed”), • preliminary amendments are not to be included • unless applicant submits an EFS copy of the application for publication • corrected drawings submitted after filing may be included if submitted under special procedure • Content of publication of a CPA is based on the application as filed prior to any CPA filing, unless a proper request for amended publication is filed • Applicant may request redacted publication under certain circumstances • Bottom-line: Content may not be an up-to-date reflection of the application file wrapper

  8. What is the content of the publication • Patent application publication will be similar to a patent in format and content • front page with title, bibliographic data, abstract, drawing figure, and IPC/US classifications • specification (including claims) in a two column arrangement • no Official Gazette for patent application publications • Unlike patents, publications • include correspondence address of record • do not include the examiner of record, nor any list of prior art cited in the application • include claims which may not have been examined, or determined to be patentable

  9. Published applications look a lot like patents.

  10. Eighteen-Month Publication - Volumes 2001 total publications: 56,584 2002 Publication volumes DateWeekly Cumulative 1/04/02 2728 59,312 1/10/02 2207 61,519 1/17/02 2539 64,058 1/24/02 3436 67,494 1/31/02 2998 70.492 2/07/02 3018 73.510 2/14/02 3280 76,790 2/28/02 3373 80,163 3/07/02 2735 82,898 3/14/02 3516 86,414 3/21/02 2809 89,223 Steady state volumes expected 6/02 at roughly 3,500 per week. All publications are electronically available on USPTO website at: http://www.uspto.gov/patft/index.html

  11. What other application information is available after publication • Access to File History • Applications are no longer maintained in confidence once they are published • USPTO will not provide direct physical access to a pending published application (see 37 CFR 1.14(c)(2)) • USPTO will provide (for a fee) a copy of the file wrapper and content of a published application • The fee is $200 for the first 400 pages and $40 for each additional 100 pages • To obtain a copy of the file, Contact the Office of Public Records at https://www3.uspto.gov/oems25p/index.html, or (703) 305-8579 • To obtain the file in FIU, the application must be abandoned. • To view computer records - See PAIR - next 2 slides

  12. Access to File History Applications that have been published are only available in the FIU if they are abandoned. Otherwise, the public must obtain a copy through Office of Public Records

  13. Access to File History Hint: Before you request a copy of the whole file wrapper, check the contents of the application in PAIR to see if there are papers other than the application as originally filed.

  14. What other application information is available after publication • Third party submission after publication: • 35 U.S.C. § 122(c) provides for procedures to ensure that there is no protest or pre-issuance opposition to a published application (without express consent of applicant) • Third party submission after publication: • 37 CFR 1.99 permits submission of patents and printed publications by third parties • 37 CFR 1.99 does not permit any activity that amounts to a protest or opposition by the third party

  15. Where can I search for free Patent application publications can be searched in a number of ways: Inventor, class, class/subclass, assignee info etc. See http://www.uspto.gov/patft/index.html

  16. What are the prior art affects of the new publications & new affect of WIPO publications (without S. 320, pending technical correction bill) • Categories of Prior art under 35 U.S.C. §§ 102(e) and 374, after AIPA • U.S. Publications of nonprovisional (§ 111(a)) applications (including voluntary publications) under § 102(e)(1); • U.S. Publications of the National Stage (§ 371) of International Applications (including voluntary publications) under § 102(e)(1); • World Intellectual Property Organization (WIPO) Publications of International Applications (IAs) under §§ 374 and 102(e)(1); and • U.S. Patents granted under § 102(e)(2).

  17. What applications are subject to the new prior art under post-AIPA 102(e) • The following applications and reexaminations are subject to prior art under post-AIPA § 102(e): • utility, design and plant patent applications under 35 U.S.C. § 111(a), filed on or after November 29, 2000 or voluntarily published pursuant to 35 U.S.C. § 122(b), including: • first filed applications • continuing applications under 37 CFR 1.53(b) • continued prosecution applications (CPAs) under 37 CFR 1.53(d) • reissues • National Stage of International Applications, complying with 35 U.S.C. § 371(c), that have internationalfiling dates on or after November 29, 2000 or were voluntarily published pursuant to 35 U.S.C. § 122(b) • reexaminations of patents issued from the above-mentioned applications

  18. What applications are subject to the prior art under pre-AIPA 102(e) • The following applications and reexaminations are subject to prior art under pre-AIPA § 102(e): • utility, design and plant patent applications under 35 U.S.C. § 111(a), filed before November 29, 2000 not voluntarily published pursuant to 35 U.S.C. § 122(b) including: • first filed applications • continuing applications under 37 CFR 1.53(b) • continued prosecution applications (CPAs) under 37 CFR 1.53(d) • reissues • National Stage of International Applications, complying with 35 U.S.C. § 371(c), that have internationalfiling dates before November 29, 2000 not voluntarily published pursuant to 35 U.S.C. § 122(b) • All reexamination of patents mentioned above • Note: The filing of a Request for Continued Examination (RCE) under 37 CFR 1.114 on or after November 29, 2000 does not subject the application to post-AIPA 102(e) unless it has been voluntarily published.

  19. Time period for copying published claims • 35 U.S.C. § 135(b) • 35 U.S.C. § 135(b)(2) bars a claim not made within one year of the date an application is published containing the same (substantially same) claim • only if application filed after date of publication • 35 U.S.C. § 374 equates IB publication under the PCT with publication under 35 U.S.C. § 122(b), with conditions for: • 35 U.S.C. § 102(e) (English language) • 35 U.S.C. § 154(d) (English translation) • 35 U.S.C. § 374 contains no “in English” or national stage entry condition for 35 U.S.C. § 135(b)

  20. Post AIPA Ex. A1 – PUBLICATIONDERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH NO § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS 05 July 2001 11/29/00 08 Oct 1997 § 111 (a) application filed with no claims for benefit/prioritybefore effective date Publication P of § 111(a) application under § 122(b) Note: CPA filed after 29 Nov 2000 caused the application to be published Note for the following slides: Text in italicsis subject to change if technical corrections bill (S. 320) is enacted.

  21. § 111(a) application filed Publication § 102(e) date: 08 Oct 1997 Post AIPA Ex. A1 -PUBLICATIONDERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH NO § 119(e) or § 120 PRIORITY/BENEFIT CLAIMS (con’t) Sample Application Publication • This publication is available as prior art against: • any application filed after 29 Nov 2000 or • any application voluntarily published that has an effective U.S filing date after 08 Oct 1997.

  22. Post AIPA Ex. A2 - PUBLICATIONDERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION 19 Apr 2000 28 Mar 2002 18 Apr 2001 11/29/00 § 111(b) application filed before effective date § 111(a) application filed claiming the benefit of the prior application under § 119(e) Publication P of the § 111(a) application under § 122(b)

  23. Publication earliest § 102(e) date: 19 Apr 2000 • This publication is available as prior art against: • any application filed after 29 Nov 2000 or • any application voluntarily published that has an effective U.S filing date after 19 Apr 2000. Post AIPA Ex. A2 - PUBLICATIONDERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 119(e) PRIORITY CLAIM TO A PROVISIONAL APPLICATION (con’t) Sample Application Publication 1st § 111(a) application filed claiming benefit under § 119(e) 1st § 111(b) application filed

  24. Post AIPA Ex. A3- PUBLICATIONDERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 120 PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION 27 Oct 1998 29 Nov 2000 11 Oct 2001 1st § 111(a) application filed before effective date Publication P of the 2nd § 111(a) application under § 122(b) 2nd § 111(a) application filed claiming the benefit of the prior application under § 120

  25. Publication earliest § 102(e) date: 27 Oct 1998 • This publication is available as prior art against: • any application filed after 29 Nov 2000 or • any application voluntarily published that has an effective U.S filing date after 27 Oct 1998. Post AIPA Ex. A3 -PUBLICATION DERIVED FROM AN APPLICATION FILED UNDER § 111(a) WITH § 120 PRIORITY CLAIM TO A NONPROVISIONAL APPLICATION (con’t) Sample Application Publication 2nd § 111(a) application filed claiming benefit under § 120 1st § 111(a) application filed

  26. Post AIPA Ex. A4: PUBLICATION OF § 111(a) APPLICATION WITH § § 119(e) & 120 PRIORITY CLAIMS 29 Oct 1999 25 Oct 2000 21 May 2001 14 Mar 2002 11/29/00 2nd § 111(a) application filed under 37 CFR 1.53(b) or (d), claiming benefit to prior application under §§ 120 and 119(e) Publication of the 2nd § 111(a) application under § 122(b) § 111(b) application filed before effective date 1st § 111(a) application filed claiming the benefit of the prior application under § 119(e)

  27. Post AIPA Ex. A4: PUBLICATION OF § 111(a) APPLICATION WITH § § 119(e) & 120 PRIORITY CLAIMS (con’t) Sample Application Publication Filing date of 1st 111(a) application claiming priority 119(e) Filing date of 2nd 111(a) application Filing date of 111(b) application • Publication earliest § 102(e)(1) date: 29 Oct 1999 • This publication is available as prior art against: • any application filed on or after 29 Nov 2000; or • any application voluntarily published that has an effective U.S filing date after 29 Oct 1999.

  28. Post AIPA Ex. A5: PUBLICATIONOF § 111(a) APPLICATION WITH § 120 PRIORITY CLAIM and § 119(a)-(d) BENEFIT CLAIM TO A FOREIGN APPLICATION. 21 Jun 1999 27 Feb 1997 16 Aug 2001 14 Mar 2002 11/29/00 2nd § 111(a) application filed under 37 CFR 1.53(b) or (d) with § 120 priority claim A Japanese application filed before 11/29/00 in Japan. 1st § 111(a) application filed claiming § 119(a)-(d) benefit to Japanese application Publication P of the 2nd § 111(a) application under § 122(b)

  29. Publication earliest § 102(e)(1) date: 21 Jun 1999 • No benefit of the foreign application is given for § 102(e)(1) purpose. • (In re Hilmer, 149 USPQ 480 (CCPA 1966)). • This publication is available as prior art against: • any application filed on or after 29 Nov 2000; or • any application voluntarily published that has an effective U.S filing date after 21 Jun 1999. Post AIPA Ex. A5: PUBLICATION OF § 111(a) APPLICATION WITH §§ 119(a)-(d) & 120 PRIORITY CLAIMS (con’t) Sample Application Publication Filing date of 1st 111(a) application claiming priority 119(a)-(d) Filing date of 2nd 111(a) application Filing date of 1st foreign application

  30. Ex. A6: Reference is a PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN ENGLISH 01 Jan 2001 01 July 2002 01 July 2003 01 Aug 2003 11/29/00 IA filed in Sweden, desig. the US Publication of IA in English under 21(2)(a) by WIPO National Stage (NS) fulfilling § 371(c)(1), (2), and (4) Publication P of NS under § 122(b) § 102(e)(1)date of publication P: 01 Jan 2001 § 102(e)(1) date of IA publication: 01 Jan 2001 These publications are available as prior art against: (a) any application has an effective U.S filing date after 01 Jan 2001

  31. Ex. A7: Reference is PUBLICATION OF NATIONAL STAGE APPLICATION AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH Best prior art date for the disclosure (§ 102(a) or (b)) 01 Jan 2001 01 July 2002 01 July 2003 01 Aug 2003 11/29/00 IA filed in Germany, desig. the US Publication of IA in German under PCT 21(2)(a) by WIPO National Stage (NS) fulfilling § 371(c)(1), (2), and (4) Publication P of NS under § 122(b) §102(e)(1) date of publication P:none § 102(e)(1) date of WIPO publication of PCT :none because the PCT was not published in English. Note: Both publications are available as prior art under § 102(a) or (b) as of their publication dates.

  32. Ex. A8: PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN ENGLISH AND CLAIMS PRIORITY TO U.S. PROVISIONAL APPLICATION 24 May 1999 26 Oct 2000 19 Oct 2001* 07 Mar 2002 14 Apr 2000 11/29/00 § 111(b) application filed before effectivedate IA filed in the EPO, desig. the US, claiming benefit to § 111(b) application Publication of IA in English under 21(2)(a) by WIPO § 111(a) application filed claiming benefit of the IA application under 35 U.S.C. § 365(c) Publication P of § 111(a) application under § 122(b) *If S. 320 is enacted, § 102(e)(1) date will be 19 Oct 2001

  33. Post-AIPA earliest publication § 102(e) date: 24 May 1999 This publication is available as prior art against: (a) any application filed on or after 29 Nov 2000 or (b) voluntarily published that has an effective U.S filing date after 24 May 1999. Post AIPA Ex. A8 - PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN ENGLISH AND CLAIMS PRIORITY TO U.S. PROVISIONAL APPLICATION (con’t) Sample Application Publication 111(a) application filed claiming benefit of IA application under 35 USC 365(c) IA filed in EPO designating US, claims benefit to prior provisional application Filing date of 111(b) application Foreign application filed

  34. Ex. A9: Reference is a PUBLICATION OF § 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH Best prior art date for the disclosure (§ 102(a) or (b)) 13 Sept 2001 09 Nov 2000 30 Apr 1999 28 Mar 2002 11/29/00 IA filed in Japan, desig. the US Publication of IA in Japanese under PCT 21(2)(a) by WIPO § 111(a) application filed claiming benefit of the IA application under 35 U.S.C. § 365(c) Publication P of § 111(a) application under § 122(b)

  35. Post-AIPA earliest publication § 102(e) date: 13 Sept 2001 This publication is not available as prior art under § 102(e) because the IA was not published in English. Ex. A9: PUBLICATION OF 111(a) APPLICATION WHICH IS A CONTINUATION OF AN IA AFTER PUBLICATION OF IA BY WIPO IN A LANGUAGE OTHER THAN ENGLISH (con’t) Sample Application Publication Filing date of 111(a) application IA filed in JPO designating US Note: The best prior art date for the disclosure is 09 Nov 2000 (the publication date of IA in Japanese) under §§ 102(a) or (b).

  36. Determining Prior art Date of References subject to Post-AIPA 102(e) of -- U.S Patents Prior art dates under and post-AIPA § 102(e)(2) are the same as pre-AIPA § 102(e),exceptwhen a patentis issued from the National Stage(§ 371) of an International Application (IA) or there is a National Stage (§ 371) of an International Application inits continuity chain. • Post-AIPA § 102(e)(2)no longer recognizes the fulfillment of the requirements of 35 U.S.C. § 371(c)(1),(2) and (4) for prior art purposes

  37. Determining Prior art Date of Referencessubject to Post-AIPA 102(e) of -- U.S Patents Post-AIPA § 102(e)(2): 1. A U.S. patent issuing from a nonprovisional application, filed under 35 U.S.C. § 111(a), is prior art under post-AIPA § 102(e)(2) as of its effective filing date • the same prior art effect as under pre-AIPA § 102(e) except when there is the National Stage of an International Application in its continuity chain 2. A U.S. patent issuing from the National Stage of an International Application (§ 371) applied as prior art under post-AIPA § 102(e)(2) is excluded & has no post-AIPA § 102(e)(2) prior art date at all

  38. Ex. P(1): Reference is a PATENT DERIVED FROM THE NATIONAL STAGE OF AN INTERNATIONAL APPLICATION 01 Jan 1998 01 July 1999 01 Jun 2000 01 Nov 2000 11/29/00 IA filed, US designated IA publication by WIPO § 371 (c)(1), (2) and (4) fulfillment Patent granted on § 371 application Post-AIPA § 102(e)(2) date of the patent: NONE This patent is not available as prior art under post-AIPA § 102(e)(2) against: • any application filed on or after 29 Nov 2000; or • any application which has been voluntarily published. • The patent is usable under § 102(a) or (b) with a prior art date of 01 Nov 2000 for the above mentioned applications. • For applications filed prior to 29 Nov 2000 and not voluntarily published, the patent has an 102(e) date of 01 Jun 2000, the date of compliance with § 371(c)(1), (2) and (4). • If S. 320 is enacted, the 102(e)(2) date will be 01 Jun 2000 for all applications because the IA was filed prior to 29 Nov 2000.

  39. 35 U.S.C. § 102(e) as proposed by S. 320 “A person shall be entitled to a patent unless — (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 if and only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or”* * Note: The exception clause applies to the use of: (1) application publications, and (2) patents, as prior art. See slides 42, and 47-49.

  40. Categories of Prior Art under S. 320’s version of 35 U.S.C. § 102(e) • U.S. Publications of nonprovisional applications* per §102(e)(1); • New documents that did not exist prior to 11/29/00 • U.S. Publications of the National Stage (§ 371) of International • Applications (IAs)* per § 102(e)(1); • New documents that did not exist prior to 11/29/00 • World Intellectual Property Organization (WIPO) Publications of IAs per §§ 374 and 102(e)(1); • Existing documents prior to 11/29/00, but for IAs filed prior to 11/29/00 the publications were not covered by § 102(e); and • All U.S. Patents per § 102(e)(2). • Existing documents covered by § 102(e) prior to 11/29/00, but under current § 102(e)(2) the prior art date accorded to the reference may be different. Patents matured from IAs, which were filed after 11/29/00, will have different prior art dates. • *includes voluntary publications

  41. Changes to the Effective Date Provision (§ 4508 of the AIPA) of 35 USC 102(e) – (§ 4505 of the AIPA) EFFECTIVE DATE. `… Except as otherwise provided in this section, the amendments made by section 4505 shall be effective as of November 29, 2000 and shall apply to all patents and all applications for patents pending on or filed after November 29, 2000. Patents resulting from an international application filed before November 29, 2000 and applications published pursuant to section 122(b) or Article 21(2) of the treaty defined in section 351(a) resulting from an international application filed before November 29, 2000 shall not be effective as prior art as of the filing date of the international application; however, such patents shall be effective as prior art in accordance with section 102(e) in effect on November 28, 2000.’ Notes: First sentence provides for uniform application of section 102(e)(1) and (2) when examining applications or evaluating the validity of patents regardless of filing date. Second sentence provides that references may not be applied as of an International filing date that is prior to 11/29/00, nor may IAs with a filing date prior to 11/29/00 be used as a bridge to an earlier U.S. filing date for prior art purposes.

  42. Applying S. 320’s version of 35 USC § 102(e): • The first sentence of § 4508 provides that the following cases would be subject to the change: • All patentswhenever granted, and all patent applicationswhenever filed, would be subject to rejections based on the revised prior art treatment under S. 320’s version§ 102(e) – and not the version of § 102(e) prior to the AIPA. • The prior art date of the reference publications and patents can be: • the actual filing date of the application (including certain international filing dates); • an earlier U.S. filing date claimed by the applicant*; • certaininternational filing dates claimed by the applicant* or • the 35 U.S.C. § 371(c)(1), (2) and (4) datefor patents derived froman IA filed before 11/29/00 (per second sentence of §§ 4508) • Note: WIPO publications of IAs filed before 11/29/00 would have no prior art effect under § 102(e) * the relied upon application must provide adequate support for the relied upon subject matter in order for the earlier date to be used

  43. Applying S. 320’s version of 35 USC § 102(e): When may an international filing date be applied as a prior art date • The second sentence of § 4508 provides that an international filing date is considered a US filing date for purposes of offensive prior art use under S. 320’s version§ 102(e) if the IA: 1) has an international filing date on or after 11/29/00, 2) was published under PCT Article 21(2) in English, and 3) designated the United States Note: The same IAs may serve as a bridge to use an earlier relied upon U.S. filing date as a prior art date under §102(e).

  44. Applying S. 320’s version of 35 USC § 102(e): When may an international filing date be applied as a prior art date (cont’d) • An international filing date prior to 11/29/00 may not be applied as a prior art date, nor may it serve as an intermediate filing to provide for use of an earlier filed US application’s filing date as a prior art date. • For any IAs filed before 11/29/00, patents derived from national stage applications, or from applications that claim benefit to the IA, may be applied as prior art as of the 35 U.S.C. § 371(c)(1), (2), and (4) date, if any, or a US filing date after the international filing date. • For any IAs filed before 11/29/00, publications by WIPO and by the US (voluntary published) may not be applied as of either the international filing date or the 35 U.S.C. § 371(c)(1)(2) and (4) date. These publications may only be applied as of their publication dates. Note: An IA with a filing date prior to 11/29/00 many not serve as a bridge to any earlier filed US application for purposes of § 102(e).

  45. PUBLICATION of § 111(a) APPLICATION with NO PRIORITY/BENEFIT CLAIMS 11/29/00 01 July 2002 01 Jan 2001 § 111 (a) application filed with no claims for benefit/priority Publication P of § 111(a) application under § 122(b) • 1. § 102(e)(1) date of Publication P: 01 Jan 2001 • § 102(e)(2) date of a Patent issuing from the § 111(a) application: 01 Jan 2001

  46. PUBLICATION and PATENTS of § 111(a) APPLICATION with § 119(e) and § 120 PRIORITY CLAIMS 31 Dec 1999 01 Jan 1999 01 Jul 2003 01 Aug 2003 11/29/00 2nd § 111(a) application filed under 37 CFR 1.53(b) or (d), claiming benefit to prior applications under §§ 120 and 119(e) § 111(b) application filed before effective date* 1st § 111(a) application filed claiming the benefit of the prior application under § 119(e)* Publication P of the 2nd § 111(a) application under § 122(b) • § 102(e)(1) date of Publication P: 01 Jan 1999 • § 102(e)(2) date of any Patent issuing from either the first or second § 111(a) application: 01 Jan 1999

  47. PUBLICATIONS and PATENT derived from an IA WHICH CLAIMS BENEFIT TO A U.S. APPLICATION 01 Nov 2003 01 Nov 1999 30 Oct 2000 01 May 2001 01 Apr 2002 01 June 2002 11/29/00 IA publication by the WIPO in English Publication of national stage application in US per § 122(b) § 111(b) application filed* IA filed, with priority claim to prior US appl., designated US 371(c)(1)(2) and (4) date of National Stage Patent granted on § 371 application Critical factors: The WIPO publication of the IA was in Englishbut the filing date of the IA was prior to 11/29/00. Thus, The § 102(e)(1) date of the WIPO Publication is: NONE The § 102(e)(1) date of the US § 122(b) Publication of the national stage application is: NONE, The § 102(e)(2) date for the Patent is: 01 April 2002, which is the § 371(c)(1), (2), and (4) date.

  48. PUBLICATIONS and PATENT derived from the NATIONAL STAGE of an IA WHICH CLAIMS BENEFIT to a U.S. APPLICATION 01 Apr 2002 01 Nov 2003 01 Dec 1999 30 Nov 2000 01 June 2001 11/29/00 IA Publication by the WIPO in English Publication of national stage application in US per § 122(b) § 111(b) application filed * IA filed, with priority claim to prior US appl., designated US Patent granted on § 371 application Critical factors: The WIPO Publication of the IA was in Englishand the filing date of the IA was after 11/29/00. Thus, The § 102(e)(1) date of the WIPO Publication is: 01 Dec. 1999 The § 102(e)(1) date of the US § 122(b) Publication of the national stage application is: 01 Dec. 1999, The § 102(e)(2) date of the Patent is: 01 Dec. 1999.

  49. PUBLICATIONS and PATENT derived from the NATIONAL STAGE of an IA WHICH CLAIMS BENEFIT to a U.S. APPLICATION 01 Apr 2002 01 Nov 2003 01 Dec 1999 30 Nov 2000 01 June 2001 11/29/00 IA Publication by the WIPO not in English Publication of national stage application in US per § 122(b) § 111(b) application filed, all inventors are Japanese * IA filed in RO/JP, with priority claim to prior US appl., designated US Patent granted on § 371 application Critical factors: The WIPO Publication of the IA was NOT in Englishand the IA was filed on or after 11/29/00.Thus, There would be no § 102(e)(1) date for the WIPO Publication, There would be no § 102(e)(1) date for the US § 122(b) Publication of the national stage application, and There would be no § 102(e)(2) date for the Patent. Note: As the IA was filed after 11/29/00, only § 102(e)(2) applies.

  50. Treatment of the Implementation Issues of AIPA’s Version of §102(e) as Proposed by S. 320 • The same prior art date would be given to a disclosure regardless of whether publication is in the form of a U.S. patent, U.S. patent application publication or WIPO publication • exception: IA filing date prior to 11/29/00 • The same prior art date would be used for a reference regardless of when the application under examination, or patent whose validity was questioned, was filed • References may not have an IA filing date as a § 102(e) where the IA was filed before 11/29/00 • In addition, IA filing dates prior to 11/29/00 may not serve as a bridge to an earlier U.S. filing date under § 102(e)

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