Note 37 CFR 1.104(a)(1) in MPEP § 707. See also MPEP § 2121- § 2129.
Canceled matter in the application file of a U.S. patent or U.S. application publication is not a proper reference as of the filing date under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). See Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). However, matter canceled from the application file wrapper of a U.S. patent or U.S. application publication may be used as prior art as of the patent or publication date, respectively, in that it then constitutes prior public knowledge or prior public availability under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a). See, e.g., In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). See also MPEP § 2127 and § 2136.02.
In the examination of an application, it is sometimes necessary to inspect the application papers of some previously abandoned application (provisional or nonprovisional) or granted patent. This is always true in the case of a reissue application and reexamination proceeding.
If the patented or abandoned file is an Image File Wrapper (IFW) file, examiners can view the application papers from their desktop via the Patent Examiner’s Toolkit. Patented and abandoned files that are not available in IFW are stored at the Files Repository. Older files are housed in remote warehouses located in Maryland and Virginia.
Patented and abandoned files that are stored in paper are ordered by means of the File Ordering System (FOS). To place such an order, the system requires the examiner's delivery organization (i.e. art unit), employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the request transaction by the examiner, a "response" screen appears which informs the examiner of the status of the request for each file. The examiner is informed that the request:
Personnel at the Files Repository periodically retrieve the requested files and deliveries of files are made to the requesters’ interoffice mailing address. Upon delivery of files at the various locations, Files Repository personnel also retrieve files that are ready to be returned to the repository.
If an abandoned application was previously published under 35 U.S.C. 122(b), that patent application publication is available as prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of its patent application publication date because the patent application publication is considered to be a "printed" publication within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1), even though the patent application publication is disseminated by the U.S. Patent and Trademark Office (Office) using only electronic media. See MPEP § 2128. Additionally, as described in MPEP § 901.03, a patent application publication published under 35 U.S.C. 122(b) of an application that has become abandoned may be available as prior art under pre-AIA 35 U.S.C. 102(e) as of the earliest effective U.S. filing date of the published application and may be available under 35 U.S.C. 102(a)(2) as of the date it was effectively filed. As provided in 37 CFR 1.11(a), unless a redacted copy of the application was used for the patent application publication, the specification, drawings, and all papers relating to the file of an abandoned published application are open to inspection by the public, and copies may be obtained from the Office. The information that is available to the public under 37 CFR 1.11(a) may be used as prior art under pre-AIA 35 U.S.C. 102(a) or 102(b) or 35 U.S.C. 102(a)(1) as of the date the information became publicly available.
Where an unpublished abandoned application is identified or whose benefit is claimed in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2), the file contents of the unpublished abandoned application may be made available to the public. See 37 CFR 1.14(a)(1)(iv). Subject matter from abandoned applications which is available to the public under 37 CFR 1.14 may be used as prior art against a pending U.S. application under pre-AIA 35 U.S.C. 102(a) or 102(b) or 35 U.S.C. 102(a)(1) as of the date the subject matter became publicly available.
In re Heritage,182 F.2d 639, 86 USPQ 160 (CCPA 1950), holds that where a patent refers to and relies on the disclosure of a previously copending but subsequently abandoned application, such disclosure is available as a reference. See also In re Lund,376 F.2d 982, 153 USPQ 625 (CCPA 1967).
It has also been held that where the reference patent refers to a previously copending but subsequently abandoned application which discloses subject matter in common with the patent, the effective date of the reference as to the common subject matter is the filing date of the abandoned application. See In re Switzer, 166 F.2d 827, 77 USPQ 156 (CCPA 1948); Ex parte Peterson, 63 USPQ 99 (Bd. App. 1944); and Ex parte Clifford, 49 USPQ 152 (Bd. App. 1940). See MPEP § 2127, subsection I.
Published abstracts, abbreviatures, defensive publications (MPEP § 901.06(d)), and statutory invention registrations (MPEP Chapter 1100) are references.
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(a)(1)(v) and 37 CFR 1.14(a)(1)(vi), pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a) ) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee or applicant and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, subsection IV.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
First, an application shall not be published if it is:
Second, an application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication. See MPEP § 1122.
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.
The following different series of U.S. patents are being or in the past have been issued. The date of patenting given on the face of each copy is the publication date and is the one usually cited. The filing date, in most instances also given on the face of the patent, is ordinarily the effective date as a reference. See MPEP §§ 2127, subsection II, 2136 and 2154. The pre-AIA 35 U.S.C. 102(e) date of a U.S. patent can be an earlier effective U.S. filing date. See MPEP § 2136 et seq. The 35 U.S.C. 102(a)(2) prior art date of a U.S. patent issued from a nonprovisional application claiming the benefit of a prior domestic application or priority to a foreign filed application may be the filing date of the prior filed application. See MPEP § 2154.01(b).
X-Series. These are the approximately 10,000 patents issued between 1790 and July 4, 1836. They were not originally numbered, but have since been assigned numbers in the sequence in which they were issued. The number should not be cited. When copies are ordered, the patentee’s name and date of issue suffice for identification.
1836 Series. The mechanical, electrical, and chemical patents issued since 1836 and frequently designated as "utility" patents are included in this series. A citation by number only is understood to refer to this series. This series comprises the bulk of all U.S. patents issued. Some U.S. patents issued in 1861 bear two numbers but only the larger number should be cited.
Reissue Series. Reissue patents (see MPEP § 1401) have been given a separate series of numbers preceded by "Re." In citing, the letters and the number must be given, e.g., Re. 1776. The date that it is effective as a reference is the effective date of the original patent application, not the filing date of the reissue application.
Design reissue patents are numbered with the same number series as "utility" reissue patents. The letter prefix does, however, indicate them to be design reissues.
A.I. Series. From 1838 to 1861, patents covering an inventor’s improvement on their own patented device were given a separate series of numbers preceded by "A.I." to indicate Additional Improvement. In citing, the letters and the number must be given, e.g., A.I. 113. About 300 such patents were issued.
Plant Patent Series. When the statutes were amended to provide for patenting certain types of plants (see MPEP Chapter 1600) these patents were given a separate series of numbers. In citing, the letters "P.P." and the number must be given, e.g., P.P. 13.
Design Patents. Patents for designs (see MPEP Chapter 1500) are issued under a separate series of numbers preceded by "D." In citing, the letter "D" and the number must be given, e.g., D. 140,000.
Following the issuance of a U.S. patent, the patent may be amended through a variety of Office proceedings. Each of these proceedings concludes with the issuance of a certificate which identifies the manner in which the patent was amended.
Reexamination Certificates. A reexamination proceeding is concluded by the issuance and publication of a reexamination certificate, which indicates all changes to the specification, including the claims, and drawings. Any changes made during the reexamination proceeding may not enlarge the scope of the claims or introduce new matter. Upon publication of the reexamination certificate, all changes are incorporated into the patent. Accordingly, the prior art date for subject matter in the reexamination certificate is the same as the prior art date for the patent that was reexamined. See 35 U.S.C. 307 and pre-AIA 35 U.S.C. 316.
Certificates of Correction. A certificate of correction corrects errors in the patent and is considered as part of the original patent. A patent, together with its certificate of correction, will have the same prior art effect as if the original patent was issued in the corrected form. See 35 U.S.C. 254 and 255.
Post-Grant Review Certificates. Once the Patent Trial and Appeal Board (PTAB) issues a final decision on post grant review proceeding and the time for appeal has expired or any appeal has terminated, the Office will issue and publish a post grant review certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any new or amended claim determined to be patentable.
Inter Partes Review Certificates. Once the PTAB issues a final decision in an Inter Partes Review proceeding and the time for appeal has expired or any appeal has terminated, the Office will issue and publish an inter partes review certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent any new or amended claim determined to be patentable.
Derivation Certificates. At the conclusion of a derivation proceeding, if the final decision of the PTAB is adverse to claims in a patent, and the time for appeal has expired or any appeal or other review of the decision has terminated, the Office will issue and publish a derivation certificate canceling those claims of the patent. Inventorship of a patent may also be corrected via a derivation proceeding.
The purpose of INID Codes ("INID" is an acronym for "Internationally agreed Numbers for the Identification of (bibliographic) Data") is to provide a means whereby the various data appearing on the first page of patent and like documents can be identified without knowledge of the language used and the laws applied. They are now used by most patent offices and have been applied to U.S. patents since August 4, 1970. Some of the codes are not pertinent to the documents of a particular country and some which are may, in fact, not be used. For a list of INID Codes, see MPEP § 901.05(b).
On January 2, 2001, the United States Patent and Trademark Office (USPTO) began printing the World Intellectual Property Organization (WIPO) Standard ST.16 code on each of its published patent documents. WIPO Standard ST.16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), utility patent, plant patent application publication, plant patent, or design patent) and the level of publication (e.g., first publication, second publication, or corrected publication). Detailed information on Standard ST.16 and the use of kind codes by patent offices throughout the world is available on the WIPO website at www.wipo.int/scit/en under the links for WIPO standards and other documentation.
In addition, some kind codes assigned to existing USPTO patent documents were changed because, beginning on March 15, 2001, patent application publications began to be published weekly on Thursdays.
The tables below give a summary of the kind codes which are no longer being used on certain published patent documents as well as a summary of the kind codes which will be used on published patent documents after January 2, 2001. It is recommended that USPTO documents be identified by the following three elements: (A) the two-character country code (US for United States of America); (B) the patent or publication number; and (C) the WIPO ST.16 kind code. For example, "US 7,654,321 B1" for U.S. Patent No. 7,654,321 where there was no previously published patent application publication, and "US 2003/1234567 A1" for U.S. Patent Application Publication No. 2003/1234567, in 2003. Each year the numbering of published patent applications will begin again with the new four-digit year and the number 0000001, so the number of a patent application publication must include an associated year.
| Summary of USPTO Kind Codes No Longer Used as of January 2, 2001* | ||
|---|---|---|
| WIPO ST.16 Kind Codes | Kind of document | Comments |
| A | Patent | Kind code replaced by B1 or B2 |
| P | Plant Patent | Kind code replaced by P2 or P3 |
| B1, B2, B3... | Reexamination Certificate | Kind code replaced by C1, C2, C3... |
*See the table below for the new uses for codes B1 and B2 beginning January 2, 2001.
| Summary of USPTO Kind Codes Used on Documents Published Beginning January 2, 2001 | ||
|---|---|---|
| WIPO ST.16 Kind Codes | Kind of document | Comments |
| A1 | Patent Application Publication | Pre-grant publication available March 2001 |
| A2 | Patent Application Publication (Republication) | Pre-grant publication available March 2001 |
| A9 | Patent Application Publication (Corrected Publication) | Pre-grant publication available March 2001 |
| B1 | Patent | No previously published pre-grant publication |
| B2 | Patent | Having a previously published pre-grant publication and available March 2001 |
| C1, C2, C3, ... | Reexamination Certificate | Previously used codes B1 and B2 are now used for granted Patents |
| E | Reissue Patent | No change |
| H | Statutory Invention Registration (SIR) | No change |
| P1 | Plant Patent Publication Application | Pre-grant publication available March 2001 |
| P2 | Plant Patent | No previously published pre-grant publication |
| P3 | Plant Patent | Having a previously published pre-grant publication and available March 2001 |
| P4 | Plant Patent Application Publication (Republication) | Pre-grant publication available after March 2001 |
| P9 | Plant Patent Application Publication (Corrected Publication) | Pre-grant publication available March 2001 |
| S | Design Patent | No change |
| Summary of USPTO Kind Codes Associated with AIA Trials | |
|---|---|
| WIPO ST.16 Kind Code | Kind of Document |
| J | Post-Grant Review Certificate |
| K | Inter Partes Review Certificate |
| O | Derivation Certificate |
All foreign patents, published applications, and any other published derivative material containing portions or summaries of the contents of published or unpublished patents (e.g., abstracts) which have been disseminated to the public are available to U.S. examiners. See MPEP §§ 901.06(a), paragraphs I.C. and IV.C and 901.08. In general, a foreign patent, the contents of its application, or segments of its content should not be cited as a reference until its date of patenting or its public availability date (e.g., publication date) can be confirmed by an examiner’s review of a copy of the document. Examiners should remember that in some countries, there is a delay between the date of the patent grant and the date of publication.
Information pertaining to those countries from which the most patent publications are received is given in the following sections and in MPEP § 901.05(a). Additional information can be obtained from the Scientific and Technical Information Center (STIC).
See MPEP § 707.05(e) for data used in citing foreign references.
This section includes some general information on foreign patent laws and summarizes particular features and their terminology. Some additional details on the most commonly cited foreign patent publications may be found under the individual country in paragraph V., below. Examiners should recall that, in contrast to the practice in many other countries, under U.S. patent law a number of different events all occur on the issue date of a U.S. patent. These events include the following:
In most foreign countries, various ones of these events occur on different days and some of them may never occur at all.
The following list catalogs some of the most significant foreign variations from U.S. practices:
In most countries, the owner of the prospective rights, derived from the inventor, may also apply for a patent in the owner’s name as applicant; in a few, other persons may apply as well or be joined as coapplicants. Hence, applicant is not synonymous with inventor, and the applicant may be a company. Some countries require the inventors’ names to be given and regularly print them on the published copies. Other countries may sometimes print the inventors’ names only when available or when requested to do so.
The word "application" is commonly used in the U.S. to refer to the entire set of papers filed when seeking a patent. However, in many countries and in PCT cases, the word application refers only to the paper, usually a printed form, which is to be "accompanied by" or have "attached" to it certain other papers, namely a specification, drawings when necessary, claims, and perhaps other papers. Unless it is otherwise noted in the following portions of this section, the term "application" refers to the entire set of papers filed.
In general, pending applications are confidential until a certain stage in the proceedings (e.g., upon patent grant), or until a certain date (e.g., 18 months after filing), as may be specified in a particular law.
Many countries have adopted the practice of publishing the specification, drawing, or claims of pending applications. In these countries, the publication of the contents of the application occurs at a certain time, usually 18 months after filing. The applicant is given certain provisional rights upon publication even though examination has not been completed or in some cases has not even begun at the time of publication.
This publication may take either of two forms. In the first form, some countries publish a notice giving certain particulars in their official journal, and thereafter, any one may see the papers at the patent office or order copies. This procedure is referred to as "laying open for public inspection." There is no printed publication of the specification, although an abstract may be published in printed form. If anyone can inspect or obtain copies of the laid open application, then it is sufficiently accessible to the public to constitute a "publication" within the meaning of pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1). The full application is thus available as prior art as of either the date of publication of its notice or its laying open to public inspection if this is a later date. See In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981). See MPEP § 2127, paragraph III.
In the second form, several other countries publish the specifications of pending applications in printed form at a specified time, usually 18 months after filing. These documents, of course, constitute references as printed publications.
Patent law administration varies from country to country. In some countries, all that is undertaken is an inspection of the papers to determine if they are in proper form. Other countries perform an examination of the merits on the basis of an extensive search of the prior art, as is done in the U.S. The former are referred to as nonexamining or registration countries, although some systems allow for a rejection on matters apparent on the face of the papers, such as matters of form or statutory subject matter.
Of the examining countries, the extent of the material searched prior to issue varies greatly. Only a few countries include both their own patents and a substantial amount of foreign patent material and nonpatent publications in their search files. Some countries specifically limit the search by rule, or lack of facilities, to their own patents with very little or no additional material. An increasing number of countries are requiring applicants to give information concerning references cited in corresponding applications filed in other countries.
Some examining countries consider participation by the public an inherent feature of their examining system. When an application is found to be allowable by the examiner, it is "published" for opposition. Then there is a period, usually 3 or 4 months, within which members of the public can oppose the grant of the patent. In some countries, the opposing party can be any person or company. In other countries, only those parties who are affected by the outcome can participate in the opposition. The opposition is an inter partes proceeding and the opposing party can ordinarily raise any ground on the basis of which a patent would be refused or held invalid, including any applicable references.
The publication for opposition may take the form of a laying open of the application by the publication of a notice in the official journal with the application being then open to public inspection and the obtaining of copies. Otherwise, publication occurs by the issue of the applications in printed form. Either way, these published documents constitute printed publications which are available as references under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1).
Practices and terminology vary worldwide regarding patents. In some countries, there is no "letters patent" document which creates and grants the rights. In other countries, the examiner grants the patent by signing the required paper. In a few countries, the patent is granted by operation of law after certain events have occurred. The term "granting the patent" is used here for convenience, but it should be noted that 35 U.S.C. 102(a) and 102(b) or 35 U.S.C. 102(a)(1) do not use this terminology.
A list of granted patents is ordinarily published in each country’s official journal and some of these countries also print an abstract or claims at or after the granting date. Not all countries publish the granted patent. Where the specifications of granted patents are issued in printed form, publication seldom occurs simultaneously with the day of grant; instead, publication occurs a short time thereafter. There also are a few countries in which publication does not take place until several years after the grant.
The length of time for which the patent is enforceable (the patent term) varies from country to country. The term of the patent may start as of the grant of the patent, or as of the filing date of the application.
Most countries require the payment of periodic fees to maintain a patent in force. These fees often start a few years after filing and increase progressively during the term of the patent. If these fees are not paid within the time allowed, the patent lapses and is no longer in force. This lapsing does not affect the use of the patent as a reference.
Some countries issue patents of addition, which should be identified as such, and when separately numbered as in France, the number of the addition patent should be cited. "Patents of addition" generally cover improvements of a patented parent invention and can be obtained by the owner of the parent invention. Inventiveness in relation to the parent invention need not be demonstrated and the term is governed by the term of the parent patent.
Since a separate patent must be obtained in each country in which patent rights are desired (except for EP, the European Patent Convention, AP, the African Regional Industrial Property Organization, OA, African Intellectual Property Organization, GC, Patent Office of the Cooperation Council for the Arab States of the Gulf, and EA, Eurasian Patent Office, whose members issue a common patent), there may be a large number of patents issued in different countries for the same invention. This group of patents is referred to as a family of patents.
All of the countries listed in paragraph V. below are parties to the Paris Convention for the Protection of Industrial Property and provide for the right of priority. If an application is filed in one of these countries, an application for the same invention thereafter filed in another country, within 1 year of the filing of the first application, will be entitled to the benefit of the filing date of the first application on fulfilling various conditions. See MPEP § 213. The patents or published specifications of the countries of later filing are required to specify that priority has been claimed and to give the country, date, and number of the priority application. This data serves the purpose, among others, of enabling any patent based on the priority application to be easily located.
In general, the specification of the second application is identical in substance to the specification of the first. In many instances, the second, if in another language, is simply a translation of the first with perhaps some variation in purely formal parts. But in a minority of cases, the two may not be identical. For instance, sometimes two applications filed in one country are combined into one second application which is filed in another country. Alternatively, a second application could be filed for only part of the disclosure of the priority application. The second application may have the relationship to the first which we refer to as a continuation-in-part (e.g., the second application includes additional subject matter discovered after the first was filed). In some instances, the second application could have its disclosure diminished or increased, to meet the requirements or practices of the second country.
Duplicate or substantially duplicate versions of a foreign language specification, in English or some other language known to the examiner, can sometimes be found. It is possible to cite a foreign language specification as a reference, while at the same time citing an English language version of the specification with a later date as a convenient translation if the latter is in fact a translation. Questions as to content in such cases must be settled based on the specification which was used as the reference.
If a U.S. patent or U.S. published application being considered as a reference in an application subject to pre-AIA 35 U.S.C. 102 claims the priority of a previously filed foreign application, it may be desirable to determine if the foreign application has issued or has been published, to see if there is an earlier date. For example, it has occurred that an examiner rejected claims on the basis of a U.S. patent and the applicant filed affidavits to overcome the filing date of the reference; the affidavits were controversial and the case went to appeal, with an extensive brief and an examiner’s answer having been filed. After all this work, somebody noticed that the U.S. patent reference claimed the priority of a foreign application filed in a country in which patents were issued fairly soon, checked the foreign application, and discovered that the foreign patent had not only been issued, but also published in printed form, more than 1 year prior to the filing date of the application on appeal. If a U.S. patent or U.S. published application is being considered as a reference in an application subject to 35 U.S.C. 102, whether the filing date of the foreign priority application claimed in the reference can be used as the "effectively filed date" under 35 U.S.C. 102(a)(2) is determined by 35 U.S.C. 102(d). See MPEP § 2154.01(b).
If a foreign patent or specification claims the priority of a U.S. application, it can be determined whether the latter is abandoned, still pending, or patented. Even if the U.S. case is or becomes patented, however, the foreign documents may still be useful as supplying an earlier printed publication date.
If a foreign patent or specification claims the priority of an application in another foreign country, it may sometimes be desirable to check the latter to determine if the subject matter was patented or published at an earlier date. As an example, if a British specification being considered as a reference claims the priority of an application filed in Belgium, it is known at once that a considerably earlier effective date can be established, if needed, because Belgian patents issue soon after filing. In addition, if the application referred to was filed in one of the countries which publish applications in printed form 18 months after filing, the subject matter of the application will be available as a printed publication as of the 18 month publishing date.
The determination of whether a foreign patent has been issued or the application published is a comparatively simple matter for some countries, bu
