Question: What would be the effect on a company’s patent portfolio if the prior art date of thousands of United States patents suddenly changed by approximately 30 months? The answer is that many of the company’s United States patents might be invalid or defective. Believe it or not, there is such a class of United States patents: The United States patents granted on PCT (Patent Cooperation Treaty) applications. This paper explains why that may be case and provides advice on actions that a company may take to limit the damage if that is the case.

During the negotiations that led up to the PCT, the United States held out for the reservation embodied in PCT Article 64(4)(a). That reservation allowed the United States to preserve the famous holding in In re Hilmer,¹ that patent applications filed outside of the United States are not prior art — even when they are identified as the Paris Convention priority application supporting a later filed United States patent application. Article 64(4)(a) in the PCT allows the PCT States to reserve the right to exclude PCT applications filed outside of that State (as of their PCT filing date) from what is considered prior art by the national laws of that State. The United States’s reservation under PCT Article 64 (4)(a) states that “the filing outside of the United States of an international application designating this country is not equated to an actual filing in the United States for prior art purposes.”² The national laws of the United States were amended to implement the PCT.³ However, the United States laws implementing its PCT Article 64(4)(a) reservation are less than clear.⁴ Based upon those laws, the prior art date of a United States patent granted on an international application can be construed to be either (1) the PCT international application’s actual filing date in the United States or (2) the date on which the PCT applicant completes the United States national stage filing requirements (including the filing in the United States Patent and Trademark Office of an English language copy of the specification of the invention, the United States national filing fee, and the executed inventor’s declaration of invention). To make matters worse, the United States national laws are silent on the prior art date of a patent issuing from an application claiming priority to a PCT application (i.e., a continuation of the PCT application). Typically, when the first application for an invention is “filed PCT,” the national stage requirements (in each country where protection is pursued) are not completed for another thirty months. This is because the PCT mandates that a State cannot require the applicant to enter that State’s national stage for thirty months.⁵ In fact, that ability to delay national stage fees and the associated attorneys fees in multiple countries while preserving the right to claim priority to the first filing date is the primary advantage of the PCT.

After the United States acceded to the PCT, the Commissioner of Patents opined that the United States national laws meant (1) that the prior art date of a patent maturing from a PCT application was the date that that application completed the national stage requirements and (2) that the prior art date of a patent granted on a continuation of a PCT application was the PCT application’s international filing date.⁶ Unfortunately, the Commissioner’s opinions do not distinguish PCT applications filed inside the United States from PCT applications filed outside the United States. The Commissioner’s opinions advise (and are followed by) the patent examiner corps on the prior art date of patents granted on PCT applications. The Commissioner also publishes on the face of patents granted on PCT applications what he believed to be their prior art date. The Commissioner’s actions result in the patent examiners (1) excluding, in their examination of applications, certain patents granted on PCT applications that may be prior art to the application under examination and (2) including, as prior art in their examination of applications, certain patents granted on PCT applications that may not be prior art to the application under examination. The Commissioner’s published prior art date of PCT patents has not, until recently, been challenged by the patent bar.

The Commissioner’s opinions were formed early on in the life of the PCT at a time when there were only a trickle of PCT applications filed in the United States Patent and Trademark Office. The Commissioner’s opinions were of little consequence at that time. However, globalization, including NAFTA, the Uruguay round of GATT, and the implementation of United States provisional applications⁷ has opened the PCT flood gates. Approximately two thousand PCT applications are being filed each month in the United States Patent and Trademark Office.⁸ Both of the Commissioner’s opinions are under unofficial reconsideration in the United States Patent and Trademark Office. In addition, there are some petitions to the Commissioner pending in the United States Patent and Trademark Office that, in effect, challenge the Commissioner’s opinions.⁹

Probably because of the examiner’s and the patent bar’s reliance upon the Commissioner’s opinions and actions, there is no judicial opinion in the United States providing guidance on the prior art date of a patent granted on a PCT application. However, it is clear that the Commissioner’s opinions run contrary to the United States’ intent in acceding to the PCT, to long established patent policies of the United States, and to judicial precedent existing prior to the PCT.¹⁰

The United States judicial opinions commenting on the meaning of prior art and expressing the United States’s policies on the meaning of prior art in addition to the intent expressed by the United States in acceding to the PCT all draw a clear distinction between the prior art effect of inventive acts occurring inside versus outside the United States. Inventive acts occurring inside the United States are accorded prior art effect.¹¹ Inventive acts occurring outside the United States are not accorded prior art effect.¹² Therefore, it is possible (1) that the prior art date of a patent granted on a PCT application filed inside the United States (i.e., in the United States Patent and Trademark Office), is its filing date, and that possibility is contrary to the Commissioner’s opinion. It is also possible that a patent granted on a continuation of a PCT application filed outside the United States is not prior art on the PCT application’s filing date, but is prior art on the (typically much later) date that that PCT application satisfies the United States national stage requirements, and that possibility is also contrary to the Commissioner’s opinion. If the Commissioner’s opinions are eventually found to be incorrect, then (1) most United States patents granted on PCT applications filed inside the United States are prior art as of their filing date, which is roughly 30 months earlier than the 35 US 102(e) prior art date printed on the face of those patents and (2) most United States patents granted on United States continuation applications claiming priority to a PCT application filed outside the United States are prior art roughly 18 months after the 35 USC 102(e) date printed on the face of those patents.¹³

Although the propriety of the Commissioner’s opinions are now at issue in the United States Patent and Trademark Office, it will probably be several years before those issues are finally decided by the United States Courts. In this sea of uncertainty, what actions should be taken to protect a company’s patent rights? There are both retrospective and prospective actions that may be taken.

Retrospective actions relate to issued United States patents. Companies’s should review their own patent portfolio of recently issued United States patents. Assume the company finds that the claims in one of its patents were narrowed in order to overcome a prior art rejection, and (1) that the rejection was based upon a United States patent, (2) that the United States patent was granted from a continuation of a PCT application, (3) that the PCT application was filed outside the United States, and (4) that the United States’s national stage filing requirements in the PCT application were completed subsequent to the company’s patent’s date of invention. Under those circumstances, the company should consider filing a reissue application for that defective patent in order to obtain broader protection. Alternatively, if there is a continuation application pending that claims priority to the defective patent, the continuation application may be used to obtain the desired scope of protection.

On the other hand, assume that claims in the company’s patent may be invalid over PCT based prior art. In that situation, a reissue application or request for reexamination may be filed in the hopes of strengthening the presumption of validity of that patent.

Furthermore, each company may consider the effect of a sea change in PCT prior art on its competitor’s patent portfolios. A third party reexamination request can be filed in the United States Patent and Trademark Office to “knock out” a competitors’ potentially invalid patent. Also note that a competitor may also be able to obtain broader protection via a reissue of one of their existing patents.

Opinions concerning validity over prior art and infringement may be affected by PCT prior art patents that either were not considered to be prior art or by PCT patents that were considered to be prior art but that in fact may not be prior art.¹⁴

Prospective actions relate to future patenting activities. First, all pending applications should be reviewed to ensure that claims have not been narrowed based upon PCT patents that may not be prior art.

For inventive activities occur in the United States, it may be more favorable to file a PCT application in the United States instead of a (non-provisional) patent application. Since the PCT application may provide all of the rights of a regular (non-provisional) patent application, and since the PCT application also preserves the right of priority for foreign filing for up to thirty months, it may be more favorable to file only a PCT application for any invention worthy of international protection.

If inventive activities occur outside the United States, it is more favorable to file a provisional application as soon as possible, in addition to filing either a foreign national or foreign PCT application. This is at least because the United States provisional application provides a filing “in the United States.” Perhaps the greatest benefit of the United States provisional application, which is often overlooked by foreign applicants, is that the provisional application enables the applicants the right to antedate references available up to one year prior to the filing date of the provisional application.¹⁵ That right is not provided by a foreign national application.¹⁶

Finally, it is likely that provisional applications will provide a prior art effect from their filing date. This is because (1) provisional applications are filed in the United States Patent and Trademark Office and (2) it appears to have been the intent of Congress that provisional applications have prior art effect from their filing date.¹⁷ However, no court has, as yet, opined on the prior art effect of a provisional application.