Patent bar Pre-AIA novelty and statutory bars question: patent under pre-AIA 102(e)

Patent barPre-AIA novelty and statutory bars

In a pre-AIA application, the examiner cites a U.S. patent to an unrelated inventor that claims priority to a French application filed on April 2, 2011; the patent's U.S. application was filed on March 30, 2012. The applicant's application was filed on January 10, 2012, with no priority claim. What is the effect of the U.S. patent under pre-AIA 102(e)?

A It is not 102(e) art, because its 102(e) date is its own U.S. filing date, March 30, 2012, not the French date
B It is 102(e) art only if the French application was published
C It is 102(e) art as of the date the patent issued
D It is 102(e) art as of April 2, 2011, the date of the French application whose priority it claims
E It is 102(b) art, because it claims priority to a foreign application

Show the answer and explanation

Answer: A. It is not 102(e) art, because its 102(e) date is its own U.S. filing date, March 30, 2012, not the French date

Answer: It is not 102(e) art, because its 102(e) date is its own U.S. filing date, March 30, 2012, not the French date. Pre-AIA 102(e) reaches only patents 'filed in the United States' before the applicant's invention. A reference's foreign priority date cannot be used as its 102(e) date (In re Hilmer; MPEP 2136.03). The reference's U.S. date, March 30, 2012, is after the applicant's January 10, 2012 filing date, so it cannot be 102(e) art. Why not the others: - The French priority date: Hilmer bars using it. - The issue date: 102(e) uses the U.S. filing date, not the issue date. - Published French application: publication abroad would matter only for 102(a) or (b), not 102(e). - 102(b) art: a 102(b) bar needs a patent or publication more than a year before the applicant's U.S. filing date; this patent issued later. Rule: Under pre-AIA 102(e), a reference's foreign priority date does not count; under AIA 102(d), it does. Source: MPEP § 2136.03 (9th ed., Rev. 01.2024); pre-AIA 35 U.S.C. 102(e); as at Oct 2026

Common mistake

Applying the AIA's 102(d) rule, which counts foreign priority dates, to a pre-AIA case.

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A patent application examined under pre-AIA law was filed in the United States on February 4, 2013, with no benefit or priority claim. The examiner cites a journal article by an unrelated author published on January 15, 2012, that anticipates the claims. The applicant has lab notebooks proving conception and reduction to practice in 2011. Can the applicant overcome the rejection with a declaration under 37 CFR 1.131?A pre-AIA application was filed on December 3, 2012, with no benefit or priority claim. Its claims are rejected under pre-AIA 102(a) over a journal article by others published on June 20, 2012. The inventor actually reduced the invention to practice in the United States in March 2012. Which reply is most appropriate?A claim recites a mathematical formula for calculating the optimal cure time of rubber, and further recites constantly measuring mold temperature, recalculating the cure time with the formula, and automatically opening the press when the calculated time has elapsed. Under the USPTO's analysis, which conclusion is best supported?

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Original study material written from the MPEP; not a question from the current exam.Independent. Not affiliated with or endorsed by the USPTO. Verify figures and rules against current guidance before relying on them.