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1857.01 Prior Art Effect of the International Publication [R-2] - 1800 Patent Cooperation Treaty
1857.01 Prior Art Effect of the International Publication [R-2]
35 U.S.C. 374 Publication of international application.
The publication under the treaty defined in section 351(a) of this title, of an international application designating the United States shall be deemed a publication under section 122(b), except as provided in sections 102(e) and 154(d) of this title.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
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(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 only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or
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An international >application< ** may be used as prior art as of its international filing date, or an earlier U.S. filing date for which ** benefit is properly claimed, under 35 U.S.C. 102(e) if the international application:
(A) was filed on or after November 29, 2000;
(B) designated the United States; and
(C) was published under PCT Article 21(2) in the English language.
If such an international application properly claims benefit >under 35 U.S.C. 119(e), 120, or 365(c)< to an earlier-filed U.S. >national< or international application >designating the U.S.< **, the international application can be applied as prior art under 35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of 35 U.S.C. 102(e), 119(e), 120, or 365(c) are met. Note, where the earlier application is >also< an international application, the earlier international application must satisfy the same three conditions (i.e., filed on or after November 29, 2000, designated the U.S. and had been published in English under PCT Article 21(2)) for the earlier international filing date to be a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).
If any of the above conditions have not been satisfied, the publication of the international application and the U.S. application publication of the national stage after compliance with 35 U.S.C. 371 may only be used as prior art as of its publication date under 35 U.S.C. 102(a) or (b). See MPEP § 706.02(a) and § 2136.03. A later filed U.S. application that properly claimed the benefit under 35 U.S.C. 120 or 365(c) of such an international application will have its own U.S. filing date for purposes of 35 U.S.C. 102(e). In addition, international applications, which: (1) were filed prior to November 29, 2000, (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a ** benefit claim for prior art purposes under 35 U.S.C. 102(e).
For more information, see MPEP § 706.02(a) and § 706.02(f)(1).
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