On November 7, 2002, the U.S. Patent and Trademark Office (USPTO) posted examination guidelines for making prior art determinations under §102(e), as amended by the American Inventors Protection Act (AIPA) of 1999 and newly enacted Public Law 107-273 (November 8, 2002).
Prior to the 1999 amendments, §102(e) gave prior art effect to patent disclosures having a filing date that preceded the applicant's invention date. In other words, even though the content of an application remained confidential while it was pending, the filing date was used as the date on which the issued patent became prior art. The prior statute accorded patents based on foreign filings prior arteffect as of their publication date, or as of the date the corresponding international application satisfied the national state requirements of §§371(c)(1), (2) and (4).
The AIPA provided for early publication of patent applications. To accommodate this change, §102(e) was amended to ensure that both issued patents and published patent applications were given the same prior art date-the filing date of the application.
The recent technical amendments to the patent statute (Pub. L. 107-273) further revised §102(e), deleting the clause concerning the prior art effect of patents issued on PCT applications. Now, a patent issuing on a PCT application published in English has, as its §102(e) date, the date of the international filing; while a patent issuing on a PCT application not published in English is given no §102(e) prior art status at all.
These amendments are applicable to all patents and all applications pending on or filed after November 29, 2000. Published PCT applications 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 §102(e) in effect on November 28, 2000."
The November 7, 2002, USPTO notice distinguishes the current version of §102(e) from the pre-1999 version, noting "two significant differences," which the USPTO summarized as follows: "[I]n addition to U.S. patents, now certain publications of U.S. and international applications may be applied as prior art as of their filing dates; and certain international filing dates are now U.S. filing dates for prior art purposes under §102(e), and U.S. patents, as well as certain application publications may now be applied as prior art, as of these international filing dates. …" (Emphasis in original.)
According to the USPTO notice, as of November 29, 2000, §102(e) prior art includes U.S. patents, publications of U.S. patent applications and World Intellectual Property Organization (WIPO) publications of international applications, provided that such references do not directly or indirectly result from an international application filed before November 29, 2000. If a U.S. patent resulted from an international application filed before November 29, 2000, the §102(e) date of the U.S. patent will be set according to the old version of §102(e), i.e., the prior art date will be the earlier of the date of compliance with §371(c)(1), (2) and (4) (e.g., National Stage Entry) or the filing date of the later-filed U.S. application that claimed the benefit of the international application.
A U.S. or WIPO publication of an international application filed prior to November 29, 2000, will have no prior art effect under §102(e), although such publications would have prior art effect under §§102(a) or (b) as of their publication dates. In addition, §102(e) as amended applies to all pending U.S. patent applications being examined and all U.S. patents being reexamined, or otherwise being contested, whenever filed.
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