Chapter §7.08 Foreign Patenting Bar of §102(d)

• Jurisdiction: United States

§7.08 Foreign Patenting Bar of §102(d)

Like §102(b), 35 U.S.C. §102(d) (2006) is considered a statutory bar provision, but the right to a patent is lost under §102(d) by a different sort of delay. Rather than being invoked by domestic activity such as sales or public use in the United States, 35 U.S.C. §102(d) (2006) is triggered when an inventor files a patent application in a foreign country, files another application on the same invention in the United States more than one year later, and the inventor's foreign patent has already issued before her U.S. filing date.⁷⁴³

[A] Policy Basis Underlying the §102(d) Bar

Section 102(d) seeks to promote prompt entry into the U.S. patent system once an inventor has commenced obtaining protection on the same invention in other countries. The policy and purpose behind §102(d) are "to require applicants for patent in the United States to exercise reasonable promptness in filing their applications after they have filed and obtained foreign patents."⁷⁴⁴

Invalidation of patents under 35 U.S.C. §102(d) is a relatively rare event.⁷⁴⁵ Most inventors who are sophisticated enough to seek protection outside the United States understand that the Paris Convention right of priority is lost if the corresponding U.S. application is not filed within 12 months of the foreign priority application. If Paris Convention priority is maintained, §102(d) would not come into play because the U.S. application would be filed within the 12-month window. The widespread use of the international filing procedures of the Patent Cooperation Treaty (PCT), which incorporates the Paris Convention right of priority, reinforces that §102(d) loss of right should be a rare occurrence.

[B] Two Prongs of §102(d)

Section 102(d) bars the grant of a patent when "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. . . ."⁷⁴⁶

Parsing this statutory text reveals that two prongs must be satisfied to trigger the §102(d) bar: (1) the applicant filed an application for a patent (or inventor's certificate⁷⁴⁷) more than 12 months before she filed an application to patent the same invention in the USPTO, and (2) the foreign patent (or inventor's certificate) was granted by the foreign government before the applicant made her U.S. filing. Merely triggering only prong (1) by waiting more than a year to file the U.S. patent application is not fatal to obtaining a U.S. patent; rather, it simply means that the U.S. applicant will not be able to claim the Paris Convention right of priority to gain the benefit of the earlier foreign filing date for her U.S. application.⁷⁴⁸ Section 102(d) loss of right is triggered only when both prongs are met; that is, the U.S. applicant not only delayed more than 12 months in filing in the USPTO, but also, the foreign government had already granted a patent (or inventor's certificate) before the applicant filed in the USPTO.

As a practical matter, both prongs of §102(d) may be triggered when research on an invention is...