6.3 The Effect of a Prior U.S. Application or PCT Application designating the United States

Patents / Biotechnology / US Biotechnology Practice

As amended by the 1999 law changes which became effective on November 29, 2000, 35 USC § 102(e) bars the grant of a patent if the invention was described in:

(1) an application for patent published under [the new “18 month publication” provision] by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the [PCT] shall have the effect under this subsection of a [published] national application ... only if the international application designating the United States was published ... in the English language; or

(2) a patent granted on an application for a patent by another filed in the United States before the invention thereof by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the [PCT].

The new text apparently applies only to patents issued on applications filed on or after November 29, 2000 or earlier filed applications that were published voluntarily. For older patents and applications, the old law continues to apply. This reads as follows:

the invention was described in a patent granted on an application for a 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 [for entry into the United States under the PCT] before the invention thereof by the applicant for patent.

It should be noted that despite the general rule that an international application filed under the PCT has effect as a national application as of its international filing date, this does not apply to this section. Under the pre-November 2000 law a PCT application that gave rise to a U.S. Patent was effective as of the date on which national phase entry was completed. Under the new law, a PCT application published in English and designating the United States is effective in the same way as a published U.S. application. However, a U.S. Patent issued directly from a PCT application will no longer be effective as prior art against a later filed application of another unless the PCT publication of the application was in English. [124]

[124] The USPTO published Examination Guidelines for 35 USC § 102(e)(2) in the Official Gazette of February 27, 2001 giving examples as to where there was or was not a change of effective prior art date as a result of the changes in the law. On its web site, the USPTO has commented on the change that “patent application publications may be used as prior art under 35 USC § 102(e) in applications filed on or after November 29, 2000, and in applications that filed before November 29, 2000 that are voluntarily published under 35 USC § 122(b). Applicants will be able to defeat the patents of others without recourse to the harsh and comparatively more expensive provisions of a statutory invention registration (35 USC § 157), and ensure that inventions that they choose not to patent are not patented by others.”

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