Editing MPEP 2135

<noinclude>{{MPEP Section|2134|2100|2136}}</noinclude>

==[[MPEP 2135|2135 35 U.S.C. 102(d)]]==

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35 U.S.C. 102. Conditions for patentability; novelty and 
loss of right to patent.

A person shall be entitled to a patent unless -

(d)the invention was first patented or caused to be patented, 
or was the subject of an inventor’s certificate, by the 
applicant or his legal representatives or assigns in a foreign 
country prior to the date of the application for patent in this 
country on an application for patent or inventor’s certificate 
filed more than twelve months before the filing of the application 
in the United States.



GENERAL REQUIREMENTS OF 35 U.S.C. 
102(d)

35 U.S.C. 102(d) establishes four conditions which, 
if all are present, establish a bar against the granting 
of a patent in this country:

(A)The foreign application must be filed more 
than 12 months before the effective U.S. filing date 
(See MPEP § 706.02 regarding effective U.S. filing 
date of an application);

(B)The foreign application must have been filed 
by the same applicant as in the United States or by his 
or her legal representatives or assigns.

(C)The foreign patent or inventor’s certificate 
must be actually granted (e.g., by sealing of the papers 
in Great Britain) before the U.S. filing date. It need 
not be published.

(D)The same invention must be involved.

If such a foreign patent or inventor’s certificate is 
discovered by the examiner, the rejection is made 
under 35 
U.S.C. 102(d) on the ground of statutory bar. 
See MPEP § 2135.01 for further clarification of each 
of the four requirements of 35 U.S.C. 102(d).




 

2135.01The Four Requirements of 35 
U.S.C. 102(d) 

I.FOREIGN APPLICATION MUST BE 
FILED MORE THAN 12 MONTHS BEFORE 
THE EFFECTIVE U.S. FILING DATE

A.An Anniversary Date Ending on a Weekend or 
Holiday Results in an Extension to the Next 
Business Day

The U.S. application is filed in time to prevent a 
35 
U.S.C. 102(d) bar from arising if it is filed on the 1 
year anniversary date of the filing date of the foreign 
application. If this day is a Saturday, Sunday or Federal 
holiday, the year would be extended to the following 
business day. See Ex parte Olah, 131 USPQ 
41 (Bd. App. 1960.) Despite changes to 37 CFR 
1.6(a)(2) and 1.10, which require the PTO to accord a 
filing date to an application as of the date of deposit as 
“Express Mail” with the U.S. Postal Service in accordance 
with 37 CFR 1.10 (e.g., a Saturday filing date), 
the rule changes do not affect applicant’s concurrent 
right to defer the filing of an application until the next 
business day when the last day for “taking any action” 
falls on a Saturday, Sunday, or a Federal holiday (e.g., 
the last day of the 1-year grace period falls on a Saturday).


B.A Continuation-in-Part Breaks the Chain of 
Priority as to Foreign as Well as U.S. Parents

In the case where applicant files a foreign application, 
later files a U.S. application claiming priority 
based on the foreign application, and then files a continuation-
in-part (CIP) application whose claims are 
not entitled to the filing date of the U.S. parent, the 
effective filing date is the filing date of the CIP and 
applicant cannot obtain the benefit of either the U.S. 
parent or foreign application filing dates. In re Van 
Langenhoven, 458 F.2d 132, 137, 173 USPQ 426, 429 
(CCPA 1972). If the foreign application issues into a 
patent before the filing date of the CIP, it may be used 
in a 35 U.S.C. 102(d)/103 rejection if the subject matter 
added to the CIP does not render the claims nonobvious 
over the foreign patent. Ex parte Appeal No. 
242-47, 196 USPQ 828 (Bd. App. 1976) (Foreign 
patent can be combined with other prior art to bar a 
U.S. patent in an obviousness rejection based on 
35 
U.S.C. 102(d)/103).

II.FOREIGN APPLICATION MUST HAVE 
BEEN FILED BY SAME APPLICANT, HIS 
OR HER LEGAL REPRESENTATIVE OR 
ASSIGNS

Note that where the U.S. application was made by 
two or more inventors, it is permissible for these 
inventors to claim priority from separate applications, 
each to one of the inventors or a subcombination of 
inventors. For instance, a U.S. application naming 
inventors A and B may be entitled to priority from 
one application to A and one to B filed in a foreign 
country.

III.THE FOREIGN PATENT OR INVENTOR’S 
CERTIFICATE WAS ACTUALLY GRANTED 
BEFORE THE U.S. FILING DATE

A.To Be “Patented” an Exclusionary Right Must 
Be Awarded to the Applicant

“Patented” means “a formal bestowal of patent 
rights from the sovereign to the applicant.” In re 
Monks, 588 F.2d 308, 310, 200 USPQ 129, 
131 
(CCPA 1978); American Infra-Red Radiant Co. v. 
Lambert Indus., 360 F.2d 977, 149 USPQ 722 (8th 
Cir.), cert. denied, 385 U.S. 920 (1966) (German 
Gebrauchsmuster petty patent was held to be a patent 
usable in a 35 U.S.C. 102(d) rejection. Gebrauchmustern 
are not examined and only grant a 6-year patent 
term. However, except as to duration, the exclusionary 
patent right granted is as extensive as in the U.S.).

B.A Published Application Is Not a “Patent”

An application must issue into a patent before it can 
be applied in a 35 U.S.C. 102(d) rejection. Ex parte 
Fujishiro, 199 USPQ 36 (Bd. App. 1977) (“Patenting,” 
within the meaning of 35 U.S.C. 102(d), does 
not occur upon laying open of a Japanese utility 
model application (kokai or kohyo)); Ex parte Links, 
184 USPQ 429 (Bd. App. 1974) (German applications, 
which have not yet been published for opposition, 
are published in the form of printed documents 
called Offenlegungsschriften 18 months after filing. 
These applications are unexamined or in the process 
of being examined at the time of publication. The 
Board held that an Offenlegungsschrift is not a patent 
under 35 U.S.C. 102(d) even though some provisional 
rights are granted. The Board explained that the provi





 

sional rights are minimal and do not come into force if 
the application is withdrawn or refused.).

C.An Allowed Application Can Be a “Patent” for 
Purposes of 35 U.S.C. 102(d) as of the Date 
Published for Opposition Even Though It Has 
Not Yet Been Granted as a Patent

An examined application which has been allowed 
by the examiner and published to allow the public to 
oppose the grant of a patent has been held to be a 
“patent” for purposes of rejection under 35 U.S.C. 
102(d) as of the date of publication for opposition if 
substantial provisional enforcement rights arise. Ex 
parte Beik, 161 USPQ 795 (Bd. App. 1968) (This case 
dealt with examined German applications. After a 
determination that an application is allowable, the 
application is published in the form of a printed document 
called an Auslegeschrift. The publication begins 
a period of opposition were the public can present evidence 
showing unpatentability. Provisional patent 
rights are granted which are substantially the same as 
those available once the opposition period is over and 
the patent is granted. The Board found that an 
Auslegeschrift provides the legal effect of a patent for 
purposes of rejection under 35 U.S.C. 102(d).).

D.Grant Occurs When Patent Becomes Enforceable


The critical date of a foreign patent as a reference 
under 35 U.S.C. 102(d) is the date the patent becomes 
enforceable (issued, sealed or granted). In re Monks, 
588 F.2d 308, 310, 200 USPQ 129, 131 (CCPA 1978) 
(British reference became available as prior art on 
date the patent was “sealed” because as of this date 
applicant had the right to exclude others from making, 
using or selling the claimed invention.). 

E.35 U.S.C. 102(d) Applies as of Grant Date 
Even If There Is a Period of Secrecy After 
Patent Grant 

A period of secrecy after granting the patent, as in 
Belgium and Spain, 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) (An invention 
is “patented” for purposes of 35 U.S.C. 102(d) when 
the patentee’s rights under the patent become fixed. 
The fact that applicant’s Spanish application was not 
published until after the U.S. filing date is immaterial 
since the Spanish patent was granted before U.S. filing.); 
Gramme Elec. Co. v. Arnoux and Hochhausen 
Elec. Co., 17 F. 838, 1883 C.D. 418 (S.D.N.Y. 1883) 
(Rejection made under a predecessor of 35 U.S.C. 
102(d) based on an Austrian patent granted an exclusionary 
right for 1 year but was kept secret, at the 
option of the patentee, for that period. The court held 
that the Austrian patent grant date was the relevant 
date under the statute for purposes of 35 U.S.C. 
102(d) but that the patent could not have been used to 
in a rejection under 35 
U.S.C. 102(a) or (b).); In re 
Talbott, 443 F.2d 1397, 170 USPQ 281 (CCPA 1971) 
(Applicant cannot avoid a 35 
U.S.C. 102(d) rejection 
by exercising an option to keep the subject matter of a 
German Gebrauchsmuster (petty patent) in secrecy 
until time of U.S. filing.). 

IV.THE SAME INVENTION MUST BE INVOLVED


“Same Invention” Means That the Application 
Claims Could Have Been Presented in the Foreign 
Patent

Under 35 U.S.C. 102(d), the “invention... patented” 
in the foreign country must be the same as the invention 
sought to be patented in the U.S. When the foreign 
patent contains the same claims as the U.S. 
application, there is no question that “the invention 
was first patented... in a foreign country.” In re Kathawala, 
9 F.3d 942, 945, 28 USPQ2d 1785, 1787 (Fed. 
Cir. 1993). However, the claims need not be identical 
or even within the same statutory class. If applicant is 
granted a foreign patent which fully discloses the 
invention and which gives applicant a number of different 
claiming options in the U.S., the reference in 
35 
U.S.C. 102(d) to “‘invention... patented’ necessarily 
includes all the disclosed aspects of the invention. 
Thus, the section 102(d) bar applies regardless 
whether the foreign patent contains claims to less than 
all aspects of the invention.” 9 F.3d at 946, 
28 
USPQ2d at 1788. In essence, a 35 U.S.C. 102(d)
rejection applies if applicant’s foreign application 
supports the subject matter of the U.S. claims. In re 
Kathawala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 
1993) (Applicant was granted a Spanish patent claiming 
a method of making a composition. The patent 
disclosed compounds, methods of use and processes 
of making the compounds. After the Spanish patent 
was granted, the applicant filed a U.S. application 
with claims directed to the compound but not the process 
of making it. The Federal Circuit held that it did 
not matter that the claims in the U.S. application were 
directed to the composition instead of the process 
because the foreign specification would have supported 
claims to the composition. It was immaterial 
that the formulations were unpatentable pharmaceutical 
compositions in Spain.).