Chapter §7.09 Description in Another's Earlier-Filed Published Application or Patent Under 35 U.S.C. §102(e)

• Jurisdiction: United States

§7.09 Description in Another's Earlier-Filed Published Application or Patent Under 35 U.S.C. §102(e)

Subsection (e) of 35 U.S.C. §102 (2006) involves anticipation through the description (though not claiming⁷⁵⁹) of the applicant's invention in a patent or published patent application of another, where that "other" filed her application in the United States before the applicant's invention date.⁷⁶⁰ Section 102(e) provides

A person shall be entitled to a patent unless—(e) the invention was described in

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent,

except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language. . . . ⁷⁶¹

For example, assume that Inventor A files a U.S. patent application claiming a solar-powered toothbrush on January 2, 2010. The USPTO examiner's search of the prior art reveals that Inventor B had already filed his own U.S. patent application describing (but not claiming⁷⁶²) the identical toothbrush on January 2, 2008, and that B's application was published 18 months later on July 2, 2009. The prior art effective date of B's application in this example is its U.S. filing date of January 2, 2008, which predates A's filing date of January 2, 2010 (i.e., A's presumptive invention date). On these facts the examiner would enter a rejection of A's claim under 35 U.S.C. §102(e)(1) (2006), one of two prongs of §102(e) discussed in further detail below.

[A] Foundation: Milburn v. Davis-Bournonville (U.S. 1926)

Section 102(e) was made a part of the 1952 Patent Act to statutorily codify the rule announced by the U.S. Supreme Court in Alexander Milburn Co. v. Davis-Bournonville Co.⁷⁶³ Distilled to its essence, Milburn requires that the disclosure of a U.S. patent, when used as prior art, be treated as constructively published as soon as it is filed in the USPTO. Patent law engages in the fiction that the contents of the patent's written description instantaneously become available as a printed publication upon filing. Thus, the effective date of the written description portion of a U.S. patent being used as §102(e) prior art is its U.S. filing date.⁷⁶⁴

In Milburn, the plaintiff (Davis-Bournonville) filed on March 4, 1911 an application in the USPTO claiming a welding apparatus invented by Whitford. The Whitford patent issued to the plaintiff on June 4, 1912. When the plaintiff later sued a competitor (Milburn) for infringement, Milburn asserted that the Whitford patent was invalid based on the content of a patent to Clifford, a non-party to the lawsuit. The Clifford patent described, but did not claim, the same welding apparatus.⁷⁶⁵ Clifford had filed his application on January 31, 1911, more than a month before Whitford filed his application. Whitford did not have any evidence of invention prior than his application filing date, which was later in time than Clifford's. Clifford's U.S. patent issued on February 6, 1912, while Whitford's patent application was still pending. Figure 7-7 depicts the timeline of events.

Although Clifford's patent was secret to the world until it issued,⁷⁶⁶ the Supreme Court held that its description of the same welding apparatus later claimed by Whitford established Clifford as anticipatory prior art, as of Clifford's filing date. The United States has traditionally awarded patent rights to the first to invent (unlike the rest of the world, which operates on a first-to-file system).⁷⁶⁷ The policy rationale underlying the result in Milburn is that the description of an invention that the applicant or patentee (e.g., Whitford) is claiming in someone else's (e.g., Clifford's) earlier-filed patent application evidences that the applicant or patentee was not in fact the first to invent that subject matter. In other words, "obviously one [Whitford] is not the first inventor if, as was the case here, somebody else [Clifford] has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor [Whitford] can carry his invention back."⁷⁶⁸

FIGURE 7-7. T imeline for Milburn v. Davis-Bournonville (U.S. 1926)

The actual identity of the prior inventor may not be known when the "someone else" (i.e., the §102(e) "another" or the "reference patentee"; e.g., Clifford) has not claimed the invention (and thus presumably did not make it).⁷⁶⁹ Based on the existence of the earlier-filed description, however, the law presumes that the first to invent is someone other than the patent applicant or patentee (e.g., Whitford).

The Supreme Court reasoned that the secret nature of Clifford's disclosure as of its effective date of January 31, 1911, was ameliorated by the fact that Clifford had filed a patent application that subsequently issued as a patent. Thus, what was originally secret eventually became public. The result would have been different had Clifford written down his description and thereafter suppressed it.⁷⁷⁰ But instead, Clifford had "done all that he could do to make his description public" by entering the patenting process.⁷⁷¹ Although the content of Clifford's application did not become public until his patent issued, filing the application in the Patent Office was (in the Court's view) tantamount to instantaneously publishing a description of the welding apparatus in a periodical, which would bar the grant of a patent to one who filed later.⁷⁷² "The delays of the patent office ought not to cut down the effect of what has been done."⁷⁷³ The Court saw "no reason in the words or policy of the law for allowing Whitford to profit by the delay and make himself out to be the first inventor when he was not so in fact, when Clifford had shown knowledge inconsistent with the allowance of Whitford's claim. . . ."⁷⁷⁴

[B] Reference Patent or Application Claims Same Invention

If the reference patent or application claims the same invention, then an interference may be declared under 35 U.S.C. §102(g)(1) (2006) if the application claims were presented within one year of the issue date of the reference patent.⁷⁷⁵ However, if more than one year has passed, the USPTO may reject the application under 35 U.S.C. §135(b) (2006).⁷⁷⁶ The issuance of the reference patent more than one year earlier acts as a statutory bar.⁷⁷⁷

[C] Ameliorating the "Secret Prior Art" Problem of §102(e)

[1] Issued U.S. Patent as §102(e) Prior Art

Before the 1999 enactment of the American Inventors Protection Act (AIPA),⁷⁷⁸ which introduced 18-month publication of most pending U.S. patent applications, 35 U.S.C. §102(e) required that an earlier-filed application by "another" had to have already issued as a patent before it became available for use by a USPTO examiner as a §102(e) prior art reference. This requirement, which is still reflected in the §102(e)(2) prong of 35 U.S.C. §102(e) in its 2006 form (i.e., as amended by the AIPA and the Twenty-First Century Department of Justice Appropriations Authorization Act (2002)⁷⁷⁹), guaranteed that the contents of the prior art patent ultimately "saw the light of day" through issuance before that patent could be used as a §102(e) reference. The issuance requirement thus ameliorated the concern that 35 U.S.C. §102(e) raises about the use of "secret prior art"—that is, prior art that is applied for its effective date (in the case of a §102(e) reference patent, its U.S. filing date) when the applicant against whom it is being asserted (as well as the public in general) cannot have known anything about its contents (because of the pre-AIPA secrecy of all pending patent applications until issuance).⁷⁸⁰

[2] Published U.S. Patent Application as §102(e) Prior Art

Due to enactment of the AIPA in 1999, the contents of most pending U.S. patent applications are now published automatically at 18 months after the application's filing date.⁷⁸¹ This change means that the written description of an earlier-filed U.S. patent application is available for use as a §102(e) prior art reference at an earlier date, that is, at its 18-month publication date rather than at any later issue date. In fact, the §102(e) reference application need never issue as a patent at all, so long as the application is published.⁷⁸²

The effective date of a 35 U.S.C. §102(e) (2006) prior art reference, whether it is an issued U.S. patent or a published patent application, remains the same in either case, however; the effective date is the U.S. application filing date of the reference patent or application.⁷⁸³ What changed is that before the AIPA, the USPTO generally had to wait until the reference application issued as a patent before the agency could rely on its contents as prior art.⁷⁸⁴ After the AIPA, that reliance can be made as soon as the reference patent application is published, because at that time it effectively becomes a "printed publication."

[3] Published Patent Cooperation Treaty Application as §102(e) Prior Art

An international application filed under the PCT⁷⁸⁵ also can be relied on by the USPTO as a §102(e)(1) (2006) reference if it meets certain requirements: the international application designated the United States and was published under the PCT in the English language.⁷⁸⁶ If these conditions are satisfied, the effective date for prior art use of the published PCT application is the filing date of the international (PCT) application, not any earlier foreign priority date to which the international application may be entitled. In other words, PCT applications designating the U.S. and published in English have §102(e) prior art effect as of their...