Editing MPEP 2127

<noinclude>{{MPEP Section|2126|2100|2128}}</noinclude>

==[[MPEP 2127|2127 Domestic and Foreign Patent Applications as Prior Art]]==

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I.ABANDONED APPLICATIONS, INCLU-
DING PROVISIONAL APPLICATIONS

Abandoned Applications Disclosed to the Public 
Can Be Used as Prior Art

“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.” 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 may 
be relied on in a 35 U.S.C. 102(e) rejection based on 
that patent 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 102(e) rejection.). See also MPEP § 
901.02. See MPEP §
 
2136.02 and § 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 120.

II.APPLICATIONS WHICH HAVE ISSUED 
AS PATENTS

A 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

Canceled matter in the application file of a U.S. 
patent cannot be relied upon in a rejection under 
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 
issues into a patent since this is the date the 
application file history becomes available to the public. 
In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 
1967). For more information on available prior art for 
use in 35 U.S.C. 102(e) rejections see MPEP 
§
 
2136.02.

A 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 35 U.S.C. 102(b) as of the 
date the application became publicly accessible. 




 

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) and (b). See In re Wyer, 
655 F.2d 221, 210 USPQ 790 (CCPA 1981). 

Older cases have held that laid open patent applications 
are not “published” and cannot constitute prior 
art. Ex parte Haller, 103 USPQ 332 (Bd. App. 1953). 
However, whether or not a document is “published” 
for the purposes of 35 U.S.C. 102 and 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 re Wyer, 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, 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(e) or 103 is 
made when appropriate. See MPEP § 706.02(f)(2), 
§
 
706.02(k), § 706.02(l)(1), and § 706.02(l)(3).

See MPEP § 706.02(a), § 804 and § 2136 et seq. for 
information pertaining to rejections relying on U.S. 
application publications.