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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)
Slip Opinion

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.

Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Shugard (collectively, “Giacomini”) filed their patent application for a “Method and Apparatus for Economical Cache Population” on November 29, 2000.  The application covered a technique of caching electronic data.  The Board rejected the Giacomini application as  anticipated by U.S. Patent No. 7,039,683 (“the Tran patent”) under § 102(e).  The Tran patent, which was filed on December 29, 2000, also covered caching techniques. Giocomini did not dispute that the Tran patent described his invention, but argued that the Tran application had been filed later than the Giacomini application.  The Tran patent claimed priority based on a provisional application filed on September 25, 2000.   The Board rejected Giacomini’s application, basing its decision on § 119(e) and giving the Tran patent an effective filing date of September 2000, the day its provisional application was filed.

Giacomini appealed to the Federal Circuit, which affirmed the Board’s decision.  In holding as it did, the court reasoned that the language of § 102(e) in light of § 111(b)(8) grants anticipatory power to provisional and non-provisional applications. The court further noted that under § 119(e), the Tran patent “shall have the same effect” as though filed on the same date as the provisional application and therefore anticipates Giacomini’s application.  Additionally, the court noted that allowing patents to anticipate based on the priority date of an earlier provisional application maintains the U.S. policy favoring the grant of patents to the first to invent.

Giacomini argued that the rule against allowing patents to anticipate based on foreign filing dates should apply to provisional applications, because in both instances an inventor is unable to determine whether or not a patent has been anticipated. In making this argument, Giacomini relied on the Court of Customs and Patent Appeals’ decision in In re Hilmer, 359 F.2d 859 (CCPA 1966) (distinguishing priority date under § 119 and effective reference date under § 102(e) in holding that the foreign filing date of a U.S. patent is not its effective date as a prior art reference).  The court distinguished foreign filings from provisional applications by noting that the decision regarding foreign filings was issued prior to Congress’s addition of provisional applications and § 119(e).  Finally, the court added that the provisional application must provide written description support for the invention that is anticipated.  Giacomini, however, waived that argument by failing to raise it at the district level.

This is the first case in which the Federal Circuit has ruled on the use of provisional filing dates as effective filing dates of patents under § 102(e).  The ruling provides additional ammunition to examiners and litigants to raise “secret prior art” claims to dispute the validity of patent applications and patents.

Ian B. Brooks is a 3L at the Harvard Law School.

The original version of this article incorrectly described Matt Osenga’s analysis of the case.  The Digest apologizes for the error.

Posted On Jul - 21 - 2010 1 Comment

One Response so far.

  1. Matt Osenga says:

    I didn’t actually say that extending the prior art date backwards may contribute to the current backlog at the PTO. Instead, what I said was that, given the current backlog, the problem of secret prior art could get worse with previously unpublished applications issuing years after they were filed to create new, previously unknown prior art.

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