MPEP 2127: Difference between revisions

2127 Domestic and Foreign Patent Applications as Prior Art

I. ABANDONED APPLICATIONS, INCLUDING 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 referenced in the disclosure of another patent, in a publication, or by voluntary disclosure

An abandoned patent application becomes available as prior art only as of the date the public gains access to it. 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.

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). 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.

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).

Older cases have held that laid open patent applications are not “published” and cannot constitute prior art. 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.

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.