2127 Domestic and Foreign Patent Applications as Prior Art [R-10.2019]

“An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under [former Defensive Publication rule] 37 CFR 1.139 [Reserved].” Lee Pharmaceutical v.Kreps, 577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978). An abandoned patent application becomes available as prior art only as of the date the public gains access to it. See 37 CFR 1.14(a)(1)(ii) and (iv). However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent or U.S. patent application publication may be relied on in a 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) rejection based on that patent or patent application publication if the disclosure of the abandoned application is actually included or incorporated by reference in the patent. Compare In re Lund, 376 F.2d 982, 991, 153 USPQ 625, 633 (CCPA 1967) (The court reversed a rejection over a patent which was a continuation-in-part of an abandoned application. Applicant’s filing date preceded the issue date of the patent reference. The abandoned application contained subject matter which was essential to the rejection but which was not carried over into the continuation-in-part. The court held that the subject matter of the abandoned application was not available to the public as of either the parent’s or the child’s filing dates and thus could not be relied on in the pre-AIA 35 U.S.C. 102(e) rejection.). See also MPEP § 901.02. See MPEP § 2136.02 and MPEP § 2136.03 for the 35 U.S.C. 102(e) date of a U.S. patent claiming priority under 35 U.S.C. 119 or 35 U.S.C. 120. See MPEP § 2154 for prior art under 35 U.S.C. 102(a)(2).

II. APPLICATIONS WHICH HAVE ISSUED AS PATENTS A. A 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e) Rejection Cannot Rely on Matter Which Was Canceled from the Application and Thus Did Not Get Published in the Issued Patent or Application Publication

Canceled matter in the application file of a U.S. patent or application publication cannot be relied upon in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). Ex Parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). The canceled matter only becomes available as prior art as of the date the application file history becomes available to the public. In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). However, as discussed below, such matter may be available as prior art under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b). For more information on available prior art for use in pre-AIA 35 U.S.C. 102(e) rejections, see MPEP § 2136.02. For more information on available prior art for use in 35 U.S.C. 102(a)(2) rejections, see MPEP § 2154et seq.

B. A 35 U.S.C. 102(a)(1) or Pre-AIA 35 U.S.C. 102(b) Rejection Over a Published Application May Rely on Information that Was Canceled Prior to Publication

Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application became publicly accessible. The patent at issue and its underlying application were available for public inspection at the Canadian Patent Office more than one year before the effective filing date of the patents in suit. Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006).

III. FOREIGN APPLICATIONS OPEN FOR PUBLIC INSPECTION (LAID OPEN APPLICATIONS) Laid Open Applications May Constitute “Published” Documents

When the specification is not issued in printed form but is announced in an official journal and anyone can inspect or obtain copies, it is sufficiently accessible to the public to constitute a “publication” within the meaning of 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) and (b). See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981).

One board decision, however, has held that laid open patent applications are not “published” and cannot constitute prior art. Ex parte Haller, 103 USPQ 332 (Bd. App. 1953). Whether or not a document is “published” for the purposes of 35 U.S.C. 102 and 35 U.S.C. 103 depends on how accessible the document is to the public. As technology has made reproduction of documents easier, the accessibility of the laid open applications has increased. Items provided in easily reproducible form have thus become “printed publications” as the phrase is used in 35 U.S.C. 102. In reWyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981) (Laid open Australian patent application held to be a “printed publication” even though only the abstract was published because it was laid open for public inspection, microfilmed, “diazo copies” were distributed to five suboffices having suitable reproduction equipment and the diazo copies were available for sale.). The contents of a foreign patent application should not be relied upon as prior art until the date of publication (i.e., the insertion into the laid open application) can be confirmed by an examiner’s review of a copy of the document. See MPEP § 901.05.

IV. PENDING U.S. APPLICATIONS

As specified in 37 CFR 1.14(a), all pending U.S. applications are preserved in confidence except for published applications (see also 35 U.S.C. 122(b)), reissue applications, and applications in which a request to open the complete application to inspection by the public has been granted by the Office (37 CFR 1.11(b)). However, if an application that has not been published has an assignee or inventor in common with the application being examined, a rejection will be proper in some circumstances. For instance, when the claims between the two applications are not independent or distinct, a provisional double patenting rejection is made. See MPEP § 804. If the copending applications differ by at least one inventor and at least one of the applications would have been obvious in view of the other, a provisional rejection over 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) or 35 U.S.C. 103 is made when appropriate. See MPEP §§ 2136.01, 2146.03(a) and 2154.01(d).

See MPEP §§ 804, 2120.01, 2136 et seq. and 2154et seq. for information pertaining to rejections relying on U.S. application publications.