Richard A. Neifeld¹ and Edward P. Heller III²

This article is in response to the letter from Mr. Heller to the editor of the JPTOS³ and the articles mentioned therein.⁴ Mr. Heller’s thesis is that the 35 USC 102(e) date of a continuation application claiming priority to an international application is an open legal question.

There is no judicial holding on the prior art status of a patent issuing from either an international application or a continuation of an international application. However, the Commissioner’s opinion expressed in the MPEP⁵ is that a patent issuing from a continuation application claiming priority to any international application is 35 USC 102(e) prior art as of the international application’s filing date. Revision 2 of the sixth edition of the MPEP at § 2136.03 relied upon Ex parte Erlich⁶ for that policy, but Erlich does not support that proposition, and revision 3 of the sixth edition of the MPEP at § 2136.03 does not cite Erlich for that proposition.

We provide a statutory and case law interpretation to clarify whether a patent issuing from a continuation application of an international application has 35 USC 102(e) effect from the filing date of the international application. In order to discuss the 35 USC 102(e) effective date of a patent issuing from a continuation of an international application, it is necessary to clarify the 35 USC 102(e) effect of an international application.

The statutes relevant to the 35 USC 102(e) effect of an international application are laid out below.

35 USC 363 states that:


International application designating the United States: Effect

An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e) of this title.

35 USC 102(e) states that:


Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless -

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(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by applicant for patent....⁷

35 USC 371(c)(1), (2), and (4) state that:


National stage: Commencement
      (c) The applicant shall file in the Patent and Trademark Office -...
      (1) the national fee provided in section 41(a) of this title;
      (2) a copy of the international application, unless not required under subsection (a) of this section or already communicated by the International Bureau, and a translation into the English language of the international application, if it was filed in another language

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      (4) an oath or declaration of the inventor (or other person authorized under chapter 11 of this title) complying with the requirements of section 115 of this title and with regulations prescribed for oaths or declarations of applicants....

Consider 35 USC 363. 35 USC 363 provides an international application the same effect as a national application filed in the United States Patent and Trademark Office (“USPTO”) except for the effect provided by 35 USC 102(e). The second clause of 35 USC 102(e) relates specifically to international applications and provides those applications with a relatively late 35 USC 102(e) date. The Commissioner’s opinion that a patent issuing from an international application obtains a relatively late 35 USC 102(e) date appears to rely upon the conclusion that only the second clause of 35 USC 102(e) is effective for an international application. However, for the reasons presented below, the Commissioner’s conclusion is suspect.

The first question to answer in construing the 35 USC 102(e) effect of an international application is: What is the effect of 35 USC 363 on 35 USC 102(e)? The exception in 35 USC 363 means that, for 35 USC 102(e), an international application is not deemed to have the effect of a national application regularly filed in the USPTO from its international filing date. However, 35 USC 363 does not state that the first clause of 35 USC 102(e) is inapplicable to an international application. That is, 35 USC 363 does not state that the first clause of 35 USC 102(e) is ineffective for an international application that satisfies the requirements specified in first clause of 35 USC 102(e).

Now consider the two clauses of 35 USC 102(e). The first clause of 35 USC 102(e) antedates the United States accession to the PCT. The first clause of 35 USC 102(e) provides an application with 35 USC 102(e) effect from when the application is filed in the United States. The second clause of 35 USC 102(e) was added to 35 USC 102(e) in response to the United States accession to the PCT. The second clause of 35 USC 102(e) provides an international application with 35 USC 102(e) effect from when the 35 USC 371(c) national stage requirements for the international application are completed. Note that the first clause of 35 USC 102(e) requires an application to be filed “in the United States” and the second clause of 35 USC 102(e) does not require an application to be filed “in the United States.”

At this point in the analysis, the difference between and probable effects of an international application that is actually filed “in the United States” (i.e., in the USPTO) and a foreign filed international application (i.e. an international application that is actually filed outside the United States) must be considered. First, consider the effect of 35 USC 102(e) on a foreign filed international application. A foreign filed international application does not satisfy the first clause of 35 USC 102(e) because it is not actually filed in the United States. However a foreign filed international application does satisfy the second clause of 35 USC 102(e) upon completion of its national stage requirements.

Now, consider an international application actually filed in the United States. Note that an international application actually filed in the United States literally satisfies the requirements for obtaining a national application filing date.⁸ The filing date of a national application is the date from which 35 USC 102(e) has been construed by the courts to provide prior art effect. Therefore, an international application actually filed in the United States obtains a 35 USC 102(e) date as of its filing date, if the first clause of 35 USC 102(e) is applicable to it.

The next question to answer is: Is the first clause of 35 USC 102(e) applicable to an international application actually filed in the United States? Judicial precedent provides that a patent issuing from an application that “carries over”⁹ subject matter disclosed in an earlier application actually filed in the United States meets all of the case law driven policy criteria for obtaining prior art effect from the earlier application’s filing date.¹⁰ The policy enunciated in those decisions is that information disclosed in the specification of a patent application is prima facie proof that the information was known in the United States on the date that the specification is in the hands of the USPTO.

Furthermore, the United States reservation under PCT article 64(4)(a) concerning the prior art effect of pending applications shows a clear intent to discriminate only against applications actually filed outside the United States,¹¹ which means that the United States did not intend to discriminate against any application actually filed “in the United States.”

The United States’s intent to preserve the 35 USC 102(e) effect of any application actually filed in the United States is consistent with the amendment to 35 USC 102(e) in response to the United States accession to the PCT. That is because an international application that is not actually filed “in the United States” does not satisfy the first clause of 35 USC 102(e) (and therefore must rely upon the date of completion of the national stage requirements specified in the second clause of 35 USC 102(e) to get a 35 USC 102(e) date). However, an international application actually filed “in the United States” satisfies the first clause of 35 USC 102(e) when it is filed in the USPTO.

We speculate that the reason that the second clause of 35 USC 102(e) requires more than the mere filing of the specification in order to obtain a 35 USC 102(e) date¹² is because it was drafted to provide the same requirements to obtain a filing date that existed in the version of 35 USC 111 in force when the United States acceded to the PCT.¹³

Notwithstanding the Commissioner’s opinions, we believe that it is likely that a court ruling on this issue will opine that a patent issuing from an international application that was actually filed in the United States (i.e., filed in the USPTO) is 35 USC 102(e) prior art from the date that it was actually filed in the USPTO.¹⁴ This is because an international application actually filed in the United States, just like a national application filed in the United States, satisfies the first clause of 35 USC 102(e). For the reasons presented above, there is no reason why the first clause of 35 USC 102(e) should not be effective for an international application actually filed in the United States.

Note that 35 USC 102(e), 35 USC 363, and 35 USC 371 contain no explicit provisions relating to a continuation application claiming priority from an international application. A continuation of an international application is not an international application. It is a 35 USC 111(a) application. How then, does a patent issued from a 35 USC 111(a) application which is a continuation of an international application become a 35 USC 102(e) reference? The answer to this question may depend upon whether the international application was actually filed in the United States.

The preceding section showed that an international application actually filed in the United States is likely to provide 35 USC 102(e) effect from its filing date. It follows that the 35 USC 102(e) date of a patent issuing from a continuation of an international application actually filed in the United States is the filing date of that international application. Therefore, the analysis with respect to continuation applications in the rest of this section is limited to continuations of foreign filed international applications.

There are two possible statutory routes to consider in construing the 35 USC 102(e) date of a patent issuing from a continuation of a foreign filed international application. The first route is based upon the effect of 35 USC 363 on the 35 USC 102(e) date of the foreign filed international application. That is, the first route is based upon the effect of any 35 USC 102(e) date that is available to a foreign filed international application. The second route is based upon the effect of the claim to the benefit of the foreign filed international application pursuant to 35 USC 120 via 35 USC 365(c) on the 35 USC 102(e) date of the continuation application.

In the first route, pursuant to 35 USC 363, a foreign filed international application has the effect of “a national application for patent regularly filed in the Patent and Trademark Office” as of its foreign filing date for all purposes except as provided in 35 USC 102(e). The preceding section of this article explained the exception in 35 USC 363 and showed that a foreign filed international application does not provide 35 USC 102(e) effect from its foreign filing date because that application does not satisfy the first clause of 35 USC 102(e). Therefore, the first route does not provide the patent with 35 USC 102(e) effect from the foreign filed international application’s filing date.

The second route is more interesting. In the second route, pursuant to the second clause of the first sentence of 35 USC 365(c), a continuation application of an international application can claim the 35 USC 120 benefit of the earlier foreign filed international application. This is because the second clause of the first sentence of 35 USC 365(c) states that:

In accordance with the conditions and requirements of section 120 of this title, ... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.

The next question to answer is: Are the requirements to obtain the 35 USC 120 benefit in a continuation application of a foreign filed international application satisfied? 35 USC 365(c) states that the benefit of the filing date of an international application must be in “accordance with the conditions and requirements of section 120.” One of those requirements is that the prior application be an application “previously filed in the United States.” However, 35 USC 363 provides a foreign filed international application with a fictitious filing date in the United States for all purposes except as otherwise provided in 35 USC 102(e). Thus, a foreign filed international application is deemed filed in the United States on its foreign filing date for the purposes of 35 USC 120. Thus, it appears that the requirements to obtain the benefit of a foreign filed international application are satisfied.

The next question to answer is: What is the effect of the 35 USC 120 benefit in the continuation application of the foreign filed international application? 35 USC 120 states that a continuation application “shall have the same effect, as to such invention, as though filed on the date of the prior application....”¹⁶

The “same effect” of 35 USC 120 provides a patent granted on a continuation of a parent national application the filing date of the parent national application for both priority and 35 USC 102(e) prior art effect. If the patent is granted on a continuation of an international application, then the continuation application may obtain the filing date of the foreign filed international application pursuant to 35 USC 120, and thereby provide 35 USC 102(e) effect from the filing date of the international application. It appears that, if a patent issuing from a continuation application claiming priority to a foreign filed international application obtains 35 USC 102(e) effect as of the filing date of the foreign filed international application, it does so because the 35 USC 365(c)/35 USC 120 route is interpreted to provide a continuation application with the same effect as if it were filed in the United States on the date that the international application was foreign filed. That is, the foreign filed international application would have to be accorded a fictitious filing date in the United States. 35 USC 363 may allow the 35 USC 120 benefit by providing a foreign filed international application with a fictitious filing date in the United States (i.e., 35 USC 363 recites that the international application designating the United States “shall have the effect . . . of a national application ... filed in the Patent and Trademark Office”).

There are two arguments against concluding that the continuation application obtains “the same effect” for 35 USC 102(e) as if it was filed on the filing date of the foreign filed international application. The first argument is based upon the facts (1) that 35 USC 119(a) also states that an application claiming priority to an earlier foreign filed application “shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was filed in the foreign country”¹⁷ and (2) that the holding in In re Hilmer¹⁸ (Hilmer I) is that the “same effect” in 35 USC 119 means the right of priority and does not mean 35 USC 102(e) prior art effect. However, the first argument is easily dispelled because Hilmer I also goes out of its way to distinguish the meaning of the “same effect” language in 35 USC 119 from the meaning of the “same effect” language in 35 USC 120, stating that:

At oral argument the Patent Office Solicitor argued by “analogy” from 35 USC 120 (a section which he said gives one U.S. application the benefit of an earlier U.S. application under specified circumstances for all purposes) that section 119 should similarly give to a patent, used as a reference under section 102(e), effect as of an earlier foreign filing date.

We could ignore the issue because it was not before the board here and was not briefed but will consider it because it is extensively discussed in Lilly (147 USPQ at 449, 445, 462) wherein the Patent Office pursued the same argument. One aspect of it is that sections 119 and 120 contain the “same phrase,” namely “shall have the same effect.”

We find no substance in this argument because: (1) as above pointed out, our statute law makes a clear distinction between acts abroad and acts here except for patents and printed publications. Section 120, following policy in sections 102(a), (e) and (g) and 104, contains the limitation to applications “filed in the United States,” excluding foreign applications from its scope. (2) Use of the same expression is mere happenstance and no reason to transfer the meaning and effect of section 120 as to U.S. filing dates to section 119 with respect to foreign filing dates. Section 120 was not drafted until 49 years after the predecessor of section 119 was in the statute.¹⁹

The second argument against concluding that the continuation application obtains 35 USC 102(e) effect from the filing date of the foreign filed international application is that that conclusion (1) is inconsistent with the United States reservation under article 64(4)(a) of the PCT and (2) is inconsistent with the long line of judicial decisions limiting secret prior art to acts “in the United States.”²⁰

However, there is one argument for concluding that the continuation application obtains “the same effect” for 35 USC 102(e) as if it was filed in the United States on the filing date of the foreign filed international application. Put bluntly, the world has changed since Hilmer I, and the policies of the United States have change accordingly. Hilmer I was not written in contemplation of either the United States’ accession to the PCT or domestic implementation of the NAFTA and the Uruguay round of the GATT. The amendment to 35 USC 104 allowing establishment of acts of invention occurring abroad, in particular, shows a weakening in the United States policy of discriminating against acts of invention occurring abroad. In fact, if the act of filing a patent application abroad is deemed an act of invention within the meaning of 35 USC 104, then the act of filing the patent application in any NAFTA or GATT country may be used to establish a date of invention on the foreign filing date for the invention disclosed in the foreign filed application — thereby substantially undermining the rationale of the holding in Hilmer I.

Finally, we note that the statutory scheme relating to priority and prior art effect of secret information is preserved if the 35 USC 120 benefit to a foreign filed international application includes (1) the right of priority provided by either 35 USC 119(a) or 35 USC 120 to the foreign filing date and (2) 35 USC 102(e) prior art effect from the date that the specification of the foreign filed international application is received “in the United States” by the USPTO. However, this would require either revision of the second clause of 35 USC 102(e) to reflect the changes in 35 USC 111 that now allow a national application to obtain a filing date when only the specification is received by the USPTO or judicial interpretation to that effect.

In conclusion, it appears unlikely that filing a continuation of a foreign filed international application in fact bumps back the effective 35 USC 102(e) date to the international application’s filing date. In addition, it also appears unlikely that filing a continuation of an international application that was actually filed in the United States has any effect on the 35 USC 102(e) date of the resulting patent. Of course, the examining corps usually follows the guidance of the Commissioner appearing in the MPEP. However, it appears likely that the courts will disagree with the Commissioner when they opine on the 35 USC 102 effect of international applications. If so, the Commissioner’s guidance will no doubt change.