Federal Circuit Distinguishes Provisional Applications from Foreign Filings for Prior Art Priority under 102(e)
By Ian B. Brooks – Edited by Anthony Kammer
In re Giacomini, No. 2009-1400 (Fed. Cir. July 7, 2010)
On July 7, 2010, the Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interferences’ (“Board”) rejection of claims of U.S. Patent Application No. 09/725,737 as anticipated under 35 U.S.C. § 102(e), the so-called “secret prior art” provision. The Federal Circuit’s ruling expanded the scope of 102(e) such that prior art U.S. patents and applications under § 102(e) are now to have an effective filing date as of the filing date of the qualifying provisional application.
The Federal Circuit held as a matter of statutory interpretation, that under § 102(e) the effective filing date for patent priority is the filing date of the provisional application, so long as the provisional application contains a written description of the claimed invention. Thus secret and confidential provisional applications will receive patent priority for a claimed invention against any later filings. The court based its decision on §§ 111(b) and 119(e), emphasizing that the patent system rewards the person who is first to invent.
Patently-O provides an overview of the case. Matt Osenga at Inventive Step provides an analysis of possible implications of the decision. The Patent Prospector discusses the decision and notes that Americans will continue to receive priority over foreign patent applications. (more…)