Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more:
The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
To learn more:
MPEP 2126.01 – Date Of Availability Of A Patent As A Reference (1)
The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
To learn more:
MPEP 2136.03 – Critical Reference Date (1)
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more:
Patent Law (2)
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more:
The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
To learn more:
Patent Procedure (2)
No, a foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“Foreign applications’ filing dates that are claimed (via 35 U.S.C. 119(a)–(d), (f) or 35 U.S.C. 365(a)) in applications, which have been published as U.S. or WIPO application publications or patented in the U.S., may not be used as pre-AIA 35 U.S.C. 102(e) dates for prior art purposes. This includes international filing dates claimed as foreign priority dates under 35 U.S.C. 365(a).”
However, it’s important to note that while the foreign priority date cannot be used as the pre-AIA 35 U.S.C. 102(e) reference date, it can still be relevant in other contexts. For example, an applicant may be able to overcome a pre-AIA 35 U.S.C. 102(e) rejection by proving they are entitled to a 35 U.S.C. 119 priority date that is earlier than the reference’s U.S. filing date.
To learn more:
The In re Ekenstam case establishes an important exception to the general rule regarding the availability of foreign patents as references. MPEP 2126.01 mentions this case:
“In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).” (MPEP 2126.01)
This case recognized that when a patent is kept secret even after rights are formally awarded, its effective date as a reference may be delayed. This exception is crucial for understanding how secret or confidential patents are treated in prior art considerations, potentially affecting their use in patent examinations and validity challenges.
To learn more: