MPEP 2126

2126 Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. 102(a), (b), and (d)

THE NAME “PATENT” ALONE DOES NOT MAKE A DOCUMENT AVAILABLE AS A PRIOR ART PATENT UNDER 35 U.S.C. 102(a) OR (b)

What a foreign country designates to be a patent may not be a patent for purposes of rejection under 35 U.S.C. 102(a) and (b); it is the substance of the rights conferred and the way information within the “patent” is controlled that is determinative. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). See the next paragraph for further explanation with respect to when a document can be applied in a rejection as a “patent.” See MPEP § 2135.01 for a further discussion of the use of “patents” in 35 U.S.C. 102(d) rejections.

A SECRET PATENT IS NOT AVAILABLE AS A REFERENCE UNDER 35 U.S.C. 102(a) or (b) UNTIL IT IS AVAILABLE TO THE PUBLIC BUT IT MAY BE AVAILABLE UNDER 35 U.S.C. 102(d) AS OF GRANT DATE

Secret patents are defined as patents which are insufficiently accessible to the public to constitute “printed publications.” Decisions on the issue of what is sufficiently accessible to be a “printed publication” are located in MPEP § 2128 - § 2128.01.

Even if a patent grants an exclusionary right (is enforceable), it is not available as prior art under 35 U.S.C. 102(a) or (b) if it is secret or private. In re Carlson, 983 F.2d 1032, 1037, 25 USPQ2d 1207, 1211 (Fed. Cir. 1992). The document must be at least minimally available to the public to constitute prior art. The patent is sufficiently available to the public for the purposes of 35 U.S.C. 102(a) or (b) if it is laid open for public inspection or disseminated in printed form. See, e.g., In re Carlson, 983 F.2d at 1037, 25 USPQ2d at 1211 (“We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all contents of the relevant prior art.”). The date that the patent is made available to the public is the date it is available as a 35 U.S.C. 102(a) or (b) reference. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958). But a period of secrecy after granting the patent has been held to have no effect in connection with 35 U.S.C. 102(d). These patents are usable in rejections under 35 U.S.C. 102(d) as of the date patent rights are granted. In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993). See MPEP § 2135 - § 2135.01 for more information on 35 U.S.C. 102(d).

2126.01Date of Availability of a Patent as a Reference [R-3]

DATE FOREIGN PATENT IS EFFECTIVE AS A REFERENCE IS USUALLY THE DATE PATENT RIGHTS ARE FORMALLY AWARDED TO ITS APPLICANT

The date the patent is available as a reference is generally the date that the patent becomes enforceable. This date is the date the sovereign formally bestows patents rights to the applicant. In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978). There is an exception to this rule when the patent is secret as of the date the rights are awarded. In re Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA 1958).

Note that MPEP § 901.05 summarizes in tabular form dates of patenting for many foreign patents. Chisum, Patents § 3.06[4] n.2 gives a good summary of decisions which specify reference availability dates for specific classes of foreign patents. A copy of Chisum is kept in the law library of the Solicitor’s Office and in the Lutrelle F. Parker, Sr., Memorial Law Library located in the Madison West Building, Room 1C35, 600 Dulany Street, Alexandria, Virginia 22314.

2126.02Scope of Reference’s Disclosure Which Can Be Used to Reject Claims When the Reference Is a “Patent” but Not a “Publication”

OFTEN UNCLAIMED DETAILS FOUND IN THE PATENT SPECIFICATION CAN BE RELIED ON EVEN IF PATENT IS SECRET

When the patented document is used as a patent and not as a publication, the examiner is not restricted to the information conveyed by the patent claims but may use any information provided in the specification which relates to the subject matter of the patented claims when making a rejection under 35 U.S.C. 102(a), (b) or (d). Ex parte Ovist, 152 USPQ 709, 710 (Bd. App. 1963) (The claim of an Italian patent was generic and thus embraced the species disclosed in the examples, the Board added that the entire specification was germane to the claimed invention and upheld the examiner’s 35 U.S.C. 102(b) rejection.); In re Kathawala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir.

1993) (The claims at issue where rejected under 35 U.S.C. 102(d) by applicant’s own parent applications in Greece and Spain. The applicant argued that the “invention ... patented in Spain was not the same ‘invention’ claimed in the U.S. application because the Spanish patent claimed processes for making [compounds for inhibition of cholesterol biosynthesis] and claims 1 and 2 were directed to the compounds themselves.” 9 F.3d at 944, 28 USPQ2d at 1786. The Federal Circuit held that “when an applicant files a foreign application fully disclosing his invention and having the potential to claim his invention in a number of ways, the reference in section 102(d) to ‘invention ... patented’ necessarily includes all disclosed aspects of the invention.” 9 F.3d at 945-46, 28 USPQ2d at 1789.)

In re Fuge, 272 F.2d 954, 957, 124 USPQ 105, 107 (CCPA 1959), does not conflict with the above decisions. This decision simply states “that, at the least, the scope of the patent embraces everything included in the [claim].” (emphasis added).

Note that the courts have interpreted the phrase “invention ... patented” in 102(a), (b), and (d) the same way and have cited decisions without regard to which of these subsections of 35 U.S.C. 102 was at issue in the particular case at hand. Therefore, it does not seem to matter to which subsection of 102 the cases are directed; the court decisions are interchangeable as to this issue.