I. Introduction

This paper outlines the Hilmer doctrine, identifies conflicts in the patent law relating to the Hilmer doctrine, and identifies changes in the statute that would remove those conflicts. The conflicts identified relate to (1) the inadequate statutory remedy for two patents claiming the same patentable invention and (2) the undermining of the Hilmer doctrine by the implementation of the PCT.

II. The Definition of the Hilmer Doctrine

The Hilmer doctrine bifurcates the date that an application obtains priority from the date that the patent granted on the application obtains prior art effect for applications filed outside the United States. The Hilmer doctrine excludes from admissible evidence, certain "secret" evidence of one inventor's acts of invention occurring outside of the United States, in determinations of patentability or validity of another inventor's claimed invention. A more limited definition of the Hilmer doctrine is that a claim to the right of priority in a United States patent, based upon a foreign priority application pursuant to 35 USC 119, does not provide to that patent prior art effect as of the foreign priority application's filing date. Judge Rich's original statement of the Hilmer doctrine is that:

It seems clear to us that the prohibitions of 104, the limitations in sections 102(a) and 102(g) to "in this country," and the specifying in 102(e) of an application filed "in the United States" clearly demonstrate a policy in our patent statutes to the effect that knowledge and acts in a foreign country are not to defeat the rights of applicants for patents, except as applicants may become involved in priority disputes.⁽²⁾

In Hilmer I, the CCPA held that a patent's 35 USC 119 foreign priority right does not provide 35 USC 102(e) prior art effect to that patent as of the patent's foreign priority application's filing date. In In re Hilmer, 424 F.2d 1108,165 USPQ 255 (CCPA 1970)(Rich, J.)(hereinafter "Hilmer II"), the CCPA held that a 35 USC 119 foreign priority right does not provide 35 USC 102(g) prior art effect to that patent as of the patent's foreign priority application's filing date.

III. The Conflict Between the Public Policy that Only One Patent Should Issue on One Invention and the Hilmer Doctrine

There is a public policy against more than one patent on a single patentable invention. Cf. In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997), aff'g Ex parte McGrew, 41 USPQ2d 2004 (PTOBPAI 1995) and Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936, 22 USPQ2d 1119 (Fed. Cir. 1992). That policy applies to all patent patents regardless of where the invention was made. However, the Hilmer doctrine's bifurcation of the dates of priority and prior art provides the possibility of a situation where two applications or patents may claim the same patentable invention and neither of them is prior art against the other. This section explores whether the USPTO and the courts have sufficient authority to enforce the policy in this situation.

A. The Authority of the USPTO to Avoid Issuing Two Non-Commonly Owned Applications Claiming the Same Patentable Invention

If two applications are not subject to common assignment and they claim obvious variations of the same patentable invention, then the Commissioner should declare an interference to determine who has the right to claim the invention. 35 USC 135(a) states that the Commissioner "may" declare an interference when there are interfering claims in an application and either a patent or another application. However, that permissive language is intended to allow the Commissioner to avoid interferences between applications where terminal disclaimers are effective, i.e., in situations of common ownership.⁽³⁾ Since USPTO should not issue two applications containing interfering claims, the issue of interfering claims should only arise in the USPTO. However, the holdings in Hilmer I and Hilmer II limited the ability of the USPTO to avoid issuing two applications containing interfering claims. For sometime after the Hilmer decisions, the USPTO had trouble preventing more than one application claiming the same patentable invention from issuing. However, the post-Hilmer case law has evolved to allow the USPTO to effectively deal with Hilmer I and Hilmer II's exclusion from prior art of acts of invention that are not "in the United States." Now the USPTO has sufficient authority derived from case law to avoid issuing two applications claiming the same patentable invention. The post Hilmer case law providing the USPTO's authority to avoid issuing two patents on the same patentable invention in both ex parte prosecution and interferences is outlined below.

In ex parte prosecution, if the USPTO suggests that a patent applicant copy a claim for purposes of instituting an interference with an application owned by another, and if the patent applicant refuses to copy the claim in order to allow the Commissioner to declare an interference, that refusal creates an irrebuttable presumption that the subject matter of the refused claim is prior art to the patent applicant's invention.⁽⁴⁾ If two applications that are currently owned by the same entity contain claims to the same patentable invention, and if those applications do not meet the requirements of common ownership at the time the invention(s) were made for avoiding a double patenting rejection by effecting a terminal disclaimer, the USPTO requires the assignee to admit which inventor invented first, and then the USPTO can reject the claims of the later inventor on that basis.⁽⁵⁾ Moreover, the USPTO has the authority to legally bind commonly owned applications claiming the same patentable invention to one another so that the patents issuing on those applications are (a) term limited and (b) enforceable only so long as they are commonly owned.⁽⁶⁾ Thus, the USPTO has sufficient authority to avoid issuing two applications claiming the same patentable invention in situations where no interference is necessary.

In situations involving an interference, the CCPA and the Federal Circuit have dealt with the consequences of the Hilmer doctrine. In response to the USPTO's Board's repeated attempts to find a statutory basis to apply the count of an interference as prior art against a losing party applicant's claims in post interference ex parte prosecution, the CCPA held (1) that a lost count is not per se statutory prior art to a losing party in an interference pursuant to 35 USC 135(a)⁽⁷⁾ and (2) that a lost count is not per se statutory prior art to a losing party in an interference under 35 USC 102.⁽⁸⁾ After McKellin, the Board had no basis that was accepted by its reviewing court upon which to reject a losing party applicant's claims to the same patentable invention that the applicant had lost in the interference. However, the Federal Circuit rectified this problem by holding that res judicata and collateral estoppel does bar a losing party applicant from obtaining a patent with claims that define subject matter that is patentably indistinguishable from the count lost by that party:

The Board's decision that the interference judgment bars Deckler from obtaining a patent for claims that are patentably indistinguishable from the claim on which Deckler lost the interference constituted a permissible application of settled principles of res judicata and collateral estoppel. Under those principles, a judgment in an action precludes relitigation of claims or issues that were or could have been raised in that proceeding. Federated Dep't Stores v. Moitie, 452 U.S. 394, 398, (1981); Montana v. United States, 440 U.S. 147, 153-54 (1979); Foster v. Hallco Mfg. Co., 947 F.2d 469, 475-76, 20 USPQ2d 1241, 1246 (Fed. Cir. 1991). Similarly, this court has applied interference estoppel to bar the assertion of claims for inventions that are patentably indistinct from those in an interference that the applicant had lost. In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986); Woods v. Tsuchiya, 754 F.2d 1571, 225 USPQ 11 (Fed. Cir.), cert. denied, 474 U.S. 825 (1985).⁽⁹⁾

Thus, Deckler allows the USPTO to reject a losing interferent's claims in order to avoid issuing two patents on the same patentable invention. In accordance with Deckler, 37 CFR 1.658(c) interference estoppel in the USPTO prevents an applicant that has lost an interference from obtaining a patent with claims defining patentably indistinguishable inventions from the lost count. 37 CFR 1.658(c) interference estoppel also prevents an applicant that has lost an interference from obtaining a patent with claims to subject matter that was merely disclosed in another application or patent involved in the interference, even if that subject matter is non-obvious in view of the count, unless the losing party took appropriate timely action in the interference to preserve that party's right to claim that subject matter.⁽¹⁰⁾

In conclusion, the USPTO has a sufficient authority to prevent two applications claiming the same patentable invention from issuing where the claimed inventions were not subject to common assignment at the time of invention.

B. The Authority of the USPTO to Avoid Issuing Two Non-Commonly Owned Applications Claiming the Same Patentable Invention Was Not Affected by the United States Implementation of the NAFTA and the Uruguay Round of the GATT

The United States implemented both the NAFTA and the Uruguay Round of GATT inter alia by amending 35 USC 104 to provide inventors of certain foreign made inventions the same right to establish a date of invention that is provided to inventors of domestic made inventions. Although the amendment to 35 USC 104 relates only to the right of priority, there has been concern in the patent bar that the fact that 35 USC 104 does give priority rights to acts of invention occurring abroad undermines the Hilmer doctrine because it allows for situations were the USPTO must issue two patents on the same patentable invention. The concerns expressed by the patent bar are best illustrated by the following example.

Consider two foreign inventors that invent similar inventions. Subsequently, each inventor files a foreign patent application. Subsequent to both foreign filing dates, each inventor files a United States patent application (1) claiming foreign priority pursuant to 35 USC 119(a) and (2) claiming the same patentable invention within the meaning of 37 CFR 1.601(n). The reasoning expressed in the patent bar is (1) that, since neither application is prior art against the other, neither applicant's claims could be subject to an interference and (2) that, even if an interference were declared, 35 USC 102(g) does not provide authority for an adverse judgement against the claims of either party.

In my opinion, the foregoing concern is misplaced because it is based upon an incorrect assumption that a 35 USC 102 showing of prior art is a necessary basis for an adverse judgement in an interference. In fact, it is 35 USC 135(a) that provides the Board the authority to enter an adverse judgement in an interference, and 35 USC 135(a) authorizes the Board to enter judgement based upon a determination of another applicant's priority of invention.⁽¹¹⁾ 35 USC 119(e) and 35 USC 104 provide for proof of priority for inventions made outside the United States. Therefore, the Board has authority to issue an adverse judgement whenever 35 USC 119(e) or 35 USC 104 rights are invoked to prove priority. Therefore, the NAFTA and the Uruguay Round of the GATT induced changes to 35 USC 104 do not in fact impact the effectiveness of the Hilmer doctrine's application in the USPTO in this example.

C. The Need For a Remedy for the Problem of Two Non-Commonly Owned Patents Claiming the Same Patentable Invention When Neither Patent Is Prior Art Due to Their Respective Foreign Priority Rights

There is a last issue arising from the fact pattern above. What happens when the USPTO erroneously issues two non-commonly owned applications claiming the same patentable invention? There is some statutory authority that theoretically allows adversely affected parties to correct the USPTO's error. However, is that authority sufficient to provide adequate relief in all situations? Specifically with respect to the Hilmer doctrine, is that authority sufficient to provide relief when neither patent is 35 USC 102 prior art against the other due to foreign priority rights? This section addresses this issue.

First, the USPTO has no jurisdiction over interfering patents. The USPTO only has jurisdiction in an interference when an application is involved. 35 USC 135(a). It is true that a patent owner that wants an interference with another's patent may be able to file a reissue application of its own patent for the ulterior motive of requesting an interference. However, reissuing a patent is a limited remedy that is not available to all patentees, and it is not intended as a vehicle for providing jurisdiction to the USPTO to declare an interference. In re Keil, 808 F.2d 830, 1 USPQ2d 1427 (Fed. Cir. 1987). Moreover, neither patentee may desire to provoke an interference.

One remedy that may be available in the USPTO to a third party is reexamination. A third party may always request the Commissioner to reexamine the validity of an issued patent. 35 USC 302. However, reexamination is limited by statute to "prior art consisting of patents or [sic; and] printed publications...." 35 USC 301.

A third party might have relief from interfering patents in some situations by requesting a reexamination. For example, if a first one of the interfering patents is prima facie 35 USC 102(e) prior art to a second one of the interfering patents, a third party may request a reexamination of the second patent based upon the facts (1) that the first patent is prima facie prior art and (2) that the claims in the second patent would have been obvious in view of the disclosure in the first patent. Reexamination procedure prevents a patent owner from antedating a rejection based upon a patent claiming the same patentable invention. Cf. Slip Track Sytems, Inc. v. Metal Lite, Inc., 48 USPQ2d 1055, 159 F.3d 1337 (Fed. Cir. 1998); and 35 USC 102(g). Thus, a reexamination can be a very effective way for a third party to cancel the claims in one of the interfering patents. However, this conclusion presumes that one of the interfering patents is prior art to the other one. As a result of Hilmer I and Hilmer II, that presumption is not necessarily correct, because either or both of the interfering patents could have a claim to foreign priority prior to the prima facie 35 USC 102(e) prior art date of the other patent. If neither patent is prior art to the other, there appears to be no statutory basis in 35 USC 301 or 35 USC 302 for a reexamination.

There is still an argument that reexamination may provide the public a remedy when neither interfering patent is prior art to the other.⁽¹²⁾ The basis of the argument is the holding and dicta in In re Lonardo⁽¹³⁾ and the public policy against two patents on the same invention. Lonardo holds (1) that non statutory double patenting is a legitimate basis for ordering reexamination and (2) that reexamination can be based upon non prior art patents over which there is non statutory double patenting. In dicta, Lonardo re-emphasizes the public policy against two patents claiming the same patentable invention, stating that:

Congress intended to include double patenting over a prior patent as a basis for reexamination because maintenance of a patent that creates double patenting is as much of an imposition on the public as maintenance of a patent that is unpatentable over prior art.⁽¹⁴⁾

Since Lonardo indicates that improper double patenting of commonly owned patents is a basis for reexamination, it would logically follow (and therefore Lonardo at least suggests the possibility) that two interfering patents which are not commonly owned could be the basis for reexamination of either of them. This is because non-commonly owned patents claiming the same patentable invention (1) burden the public with the threat of suit by multiple entities on the same patentable invention and (2) extend the temporal exclusive right on that patentable invention. Thus, non-commonly owned patent claiming the same patentable invention are probably a greater burden on the public than commonly owned (and properly terminally disclaimed) patents claiming the same patentable invention. Double patenting case law currently does not cover a situation involving non-commonly owned patents. However, see the discussion of 35 USC 101 in Ortho Pharmaceutical Corp., supra.

Finally, the Federal Circuit does not have authority to hear an appeal from a third party reexamination requester whose request is denied. 35 USC 303(c). Therefore, it is unlikely that the Federal Circuit's guidance in Lonardo could force the Commissioner to grant reexamination of a patent based upon interfering claims in a non-commonly owned non prior art patent.⁽¹⁵⁾

Second, a district court does have jurisdiction over interfering patents to determine the question of "validity of any of the interfering patents...." 35 USC 291. That statute allows an owner of an interfering patent to bring a patent-patent interference suit in the district court. However, the district court's authority is limited to determining validity. If both patents are valid because neither patent is prior art against the other, then the district court has no explicit authority to invalidate one of the patents. The district courts do not have the type of express statutory authority provided to the Board by 35 USC 135(a) to enter judgement against one party to an interference in the USPTO based upon a determination of priority. Compare 35 USC 135(a) and 35 USC 291, and note In re McKellin, 529 F.2d 1324, 1327, 188 USPQ 428, 432 (CCPA 1976)("A determination of priority of invention adverse to an applicant constitutes the final refusal by the Patent and Trademark Office of the claims involved. 35 USC 135.") (emphasis in the original). The final refusal of claims by the USPTO pursuant to 35 USC 135(a) has been characterized as procedural, McKellin, supra, and that procedure is not available to a district court.

Moreover, not all patent owners desire to bring patent-patent interference actions. This is particularly true when either at least one of the patent owners is not infringing the patented invention or there is a cross-license between the patent owners. Furthermore, third parties (i.e., parties that are not owners of one of the interfering patents) are not authorized by 35 USC 291 to bring a patent-patent interference. Accordingly, third parties could be burdened with the threat of suit or paying for multiple licenses from different patent owners on patents claiming the same patentable invention. Thus, the patent-patent interference statute does not completely remedy the existence of interfering patents.

If a third party becomes a defendant to a 35 USC 271 patent infringement suit in which an interfering patent is asserted, the defendant may have standing to raise the question of interfering patents in its defense. The defendant could allege (1) that it has a license to a patent and (2) that the asserted patent interferes with and is invalid over the licensed patent. In that situation, the defendant has an interest in a determination of which patent is valid. However, that defense is not likely to be effective. Cf. Xerox Corporation v. Nashua Corporation, 314 F.Supp 1187, 166 USPQ 344 (D.C. S. N.Y. 1970). Moreover, asserting that defense requires the defendant either to wait to be sued or to have grounds to file a declaratory judgement action neither of which is a very desirable situation.

In conclusion, the existing remedies for correcting two patents claiming the same patentable invention are insufficient.

D. Proposed Statutory Changes to Provide a Remedy for the Problem of Two Non-Commonly Owned Patents Claiming the Same Patentable Invention When Neither Patent Is Prior Art Against the Other Due to Their Respective Foreign Priority Rights

One statutory change that would provide a remedy for interfering patents when neither patent is prior art against the other due to rights of priority under 35 USC 119(a) is an amendment to 35 USC 291 to provide district courts jurisdiction to cancel claims in a patent-patent interference based upon a determination of priority of invention for the interfering claims. That amendment would provide the district courts statutory authority in parallel with the authority provided in 35 USC 135(a) to the Board to issue adverse judgements in an interference based upon a determination of priority of invention. This remedy could be provided by an amendment to 35 USC 291 to include the sentence:

The court may hold an interfering claim in one patent unenforceable based upon a determination that the subject matter defined by the interfering claim was first invented and not thereafter abandoned, suppressed or concealed by the inventor of another patent involved in the interference.

However, that remedy arguably conflicts with the Hilmer doctrine because it places the procedural final refusal of claims in the USPTO on the same level as a district court's substantive cancellation of rights.

Another statutory change that would provide a more widely available remedy accounting for the public's interest in avoiding two patents on the same patentable invention would be to provide the Board statutory authority to declare a patent-patent interference at the request of any member of the public. The PTO could institute procedures similar to those required for an order granting a reexamination, in order to consider a third party's request for a patent-patent interference. That authority would allow the USPTO to remedy the error in granting two patents on the same patentable invention. Notably, this statutory remedy would greatly expand the Board's jurisdiction to all situations where the USPTO has erroneously issued two patents on the same patentable invention. This remedy could be provided by an amendment to 35 USC 135(a) adding after the first sentence of 35 USC 135(a):

Whenever a member of the public requests the Commissioner to declare an interference between two or more unexpired patents and pays a fee prescribed by the Commissioner pursuant to the provisions of section 41 of this title, the Commissioner shall give notice to the owners of record of the patents and determine whether the patents interfere with one another. The request must set forth the basis why at least one claim in each patent interferes with at least one claim in any other patent identified in the request. If the Commissioner determines that two or more patents interfere with one another, an interference shall be declared, and the Commissioner shall give notice of such declaration to the patentees and the requestor.

IV. The PCT as Implemented Undermines the Hilmer Doctrine

A. Introduction

This section looks at the effect of the implementation of the PCT and related statutory changes and case law on the Hilmer doctrine. As explained below, the United States's implementation of the PCT undermines the Hilmer doctrine because that implementation does not define the prior art date of a patent to be when the application disclosing the invention claimed in the patent was first filed in this country.

B. The United States' Implementation of the PCT Was Supposed to Give Prior Art Effect to PCT Applications by Maintaining the Substantive Law That a United States Patent Is Prior Art "From the Date of Filing in the United States" of an Application for a Patent on the Invention

Implementing legislation relating to the PCT was enacted into United States national law in 1975.⁽¹⁶⁾ The United States legislation implementing the PCT enables a filing in any country that is a member of the PCT to ultimately issue into a United States patent. 35 USC 363 and 35 USC 375. The United States reserved the right provided by PCT article 64(4)(a) to distinguish between the prior art date of a filing outside of the United States from a filing in the United States.⁽¹⁷⁾ According to the testimony of Commissioner Dann, the PCT and the legislation implementing the PCT was not supposed to affect substantive United States patent law:

When the Patent Cooperation Treaty was negotiated, it was understood that it would not serve as a vehicle to change substantive national law. Under our present law, a patent is treated as prior art from the date of filing in the United States, even though it may have been first filed in a foreign country at an earlier date. S. 24 maintains this principle by giving prior art effect to patents granted on international applications only from the date on which certain national requirements have been fulfilled in the United States. [CIS-1976-H521-1, p. 30, (1975).]

Thus, the United States' implementation of the PCT was supposed to give prior art effect to PCT applications by maintaining the substantive United States law that a United States patent becomes prior art "from the date of filing in the United States" of an application for a patent on the invention.

PCT applications are held in secret until published. PCT article 30. Therefore, the only sections of 35 USC 102 that may be satisfied by the filing of a PCT application are 35 USC 102(e) and 35 USC 102(g), since those are the code sections providing for secret prior art.

C. The 35 USC 102(e) Date of a Patent Granted On a PCT Application

1. The Meaning of "Granted On" in 35 USC 102(e)

At the outset, it is important to note that prior to the existence of the PCT, the CCPA construed the "granted on" recitation in the first clause of 35 USC 102(e) ("described in a patent granted on an application") to refer to the application first disclosing the invention claimed in the patent, and held that the 102(e) date of that patent to be the filing date in the USPTO of the application first disclosing the claimed invention.⁽¹⁸⁾ The second clause of 35 USC 102(e) also refers to a patent granted on an application.

2. The Requirements For a 35 USC 102(e) Date Based Upon the First Clause of 35 USC 102(e)

The first clause of 35 USC 102(e) relates to "an application." The first clause of 35 USC 102(e) provides a patent prior art effect from the time of filing in the United States of the application that the patent was "granted on." According to Klesper, the application that a patent was "granted on" is the first priority application filed in this country disclosing the claimed invention. When the PCT was implemented in 1975, the filing date accorded by the Commissioner to a national application was when the USPTO had received (1) the disclosure, (2) the inventor's declaration, and (3) the national filing fee.⁽¹⁹⁾

In 1982, Congress amended 35 USC 111 to specify that the filing date of a patent application is the date on which the USPTO receives a disclosure. See 35 USC 111(a)(4). Since the prior art date defined by the first clause of 35 USC 102(e) keys off of the filing date, Klesper, supra, the first clause of 35 USC 102(e) now provides prior art effect to a patent on the day the disclosure is filed in the United States.

3. The Requirements For a 35 USC 102(e) Date Based Upon the Second Clause of 35 USC 102(e)

35 USC 363 states that "an international application designating the United States [i.e., a PCT application] shall have the effect, from its international filing date ... as a national application ... except as otherwise provided in section 102(e)." The second clause of 35 USC 102(e) was added in implementing the PCT. The second clause of 35 USC 102(e) explicitly provides a 35 USC 102(e) date to a patent granted on a PCT application when the 371(c)(1), (2), and (4) requirements are satisfied.

4. The 35 USC 102(e) Date of a Patent Issued From a PCT Application Depends Upon Whether the First Clause of 35 USC 102(e) is Applicable

All PCT applications satisfy the second clause of 35 USC 102(e) upon entering the national stage. PCT applications actually filed abroad are never actually filed in the United States, and therefore they can never satisfy the "application for patent ... filed in the United States" requirement in the first clause of 35 USC 102(e). In contrast, PCT applications actually filed in the United States do literally satisfy the first clause of 35 USC 102(e) when they are filed. Therefore, if the first clause of 35 USC 102(e) is applicable to PCT applications, then the 1982 amendment in 35 USC 111 effected a dramatic change in the 35 USC 102(e) date of a patent granted on a PCT application actually filed in the United States. For example, consider a patent granted on a PCT application actually filed in the USPTO in which the national stage requirements are completed thirty months after the PCT application was filed. If only the second clause of 35 USC 102(e) is applicable to the PCT application, the 35 USC 102(e) date of the patent is the date of completion of the national stage requirements, which is thirty months after the PCT application was filed. However, if the first clause of 35 USC 102(e) is also applicable to the PCT application, the 35 USC 102(e) date of the patent is the filing date of the PCT application. Thus, if the first clause of 35 USC 102(e) is applicable to the PCT application, the patent granted on the PCT application has a 35 USC 102(e) date thirty months earlier than if only the second clause of 35 USC 102(e) is applicable to the PCT application. (Of course, the PCT application becomes 35 USC 102(a) prior art upon its publication eighteen months after filing.) There is no judicial authority on the 35 USC 102(e) dates of PCT patents. The only existing authority are the Commissioner's opinions on these dates.

5. The Commissioner's Opinion on the 35 USC 102(e) Date of a Patent That Issues From a PCT Application Filed in the United States Undermines the Hilmer Doctrine

The Commissioner opines that the first clause of 35 USC 102(e) is inapplicable to any patent issuing from a PCT application. The Commissioner's opinion results in a "reverse Hilmer" effect by not granting a PCT application actually filed in the USPTO a 35 USC 102(e) date until the requirements of 35 USC 371(c)(1), (2), and (4) have been satisfied. This reverse Hilmer effect undermines the Hilmer doctrine since (1) it lacks logical consistency with the rationale why a national application obtains 35 USC 102(e) prior art effect and (2) because it applies against a domestic filing the bias reserved under the Hilmer doctrine for foreign filings.

Moreover, the Commissioner's opinion that the first clause of 35 USC 102(e) is inapplicable to a patent issuing from a PCT application adversely impacts primarily domestic applicants, since domestic applicants are more likely to file PCT applications in the USPTO as their first priority filing. Domestic applicants that first file PCT in the USPTO typically wait about thirty months before entering the national stage. According to the Commissioner's opinion, those domestic PCT applicants lose eighteen months on the prior art effect for patents issuing from their PCT applications. In contrast, foreign PCT applicants import their foreign filed PCT applications to the United States by completing the 35 USC 371(c) requirements, which means that the foreign PCT applicants obtain, through the second clause of 35 USC 102(e), prior art effect for their PCT applications no later than the time that their PCT applications are actually imported in the United States.

6. The Commissioner's Opinion on the 35 USC 102(e) Date of a Patent Claiming Priority to a PCT Application Filed Abroad Undermines with the Hilmer Doctrine

The Commissioner opines that a patent issuing from a continuation of a PCT application is 35 USC 102(e) prior art as of the PCT application's filing date. For example, assume the Commissioner issues a United States patent that claims priority (pursuant to 35 USC 120/35 USC 365(c)) to a PCT application actually filed in Japan. The Commissioner identifies on the face of that United States patent the PCT application's Japanese filing date as the 35 USC 102(e) date.

The Commissioner's opinion that a patent claiming priority to a PCT application actually filed in a foreign country has a 35 USC 102(e) prior art date as of the PCT application's foreign filing date undermines the Hilmer doctrine by providing prior art effect to applications prior to their filing in the United States.

D. 35 USC 102(g) Date of a Patent Granted on a PCT Application

1. The Requirements For a 35 USC 102(g) Date

The requirements for 35 USC 102(g) prior art are (1) that there is a reduction to practice of an invention, (2) that the reduction to practice occurs in this country, and (3) that the invention is not thereafter abandoned suppressed or concealed.⁽²⁰⁾

A constructive reduction to practice occurs upon filing an application.⁽²¹⁾ Therefore, a United States patent issuing from an application filed in the United States provides evidence admissible under 35 USC 102(g) and 35 USC 103 of prior art.⁽²²⁾

4. In re McKellin, 529 F.2d 1324, 1328, 188 USPQ 428, 433 (CCPA 1976)("We have recently reviewed the consequences of a concession of priority with respect to the count of an interference. See In re Ogiue, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975). Therein we held that an applicant's refusal to copy claims which he could make resulted in a concession of priority (termed a "disclaimer" in 37 CFR 1.203(b)) that the subject matter of those claims is the prior invention of another in this country under section 102(g) and thus prior art to that applicant under section 103. Id. at 1390-91, 186 USPQ at 234-35. That is the legal consequence of a concession of priority which does not depend on when or where the subject matter of the claims not copied was invented. Id. at 1391 n.3, 186 USPQ at 235 n.3. Such consequences are imposed when an applicant, by refusing to copy claims, prevents an award of priority based on evidence of record.").

5. In re Fischel, 136 F.2d 254, 258, 58 USPQ 80, 85 (CCPA 1943).("We think the true doctrine of election in patent cases is grounded upon one or more of three fundamental propositions. First, the application of the doctrine prevents two patents' being issued for the same invention. Second, it prevents an avoidance of the determination of priority. Third, it prevents an extension of the monopoly."); In re Hession, 296 F.2d 930, 934, 132 USPQ 40, 44 (CCPA 1961)("In other words, the court [in In re Fischel, 136 F.2d 254, 58 USPQ 80] was of the opinion that priority is determined by the elective act of the common assignee and he [sic; it] should not be permitted to annul or avoid that determination."); and 37 CFR 1.78(c).

Third parties are not bound by an assignee's election of priority. James B. Clowe & Sons, Inc. v. United States Pipe and Foundry Co., 313 F.2d 46, 136 USPQ 397 (5th Cir. 1963); and United Chromium, Inc. v. General Motors Corp, 85 F.2d 577, 31 USPQ 105 (2nd Cir. 1936).

6. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); and 37 CFR 1.321.

7. In re McKellin, 529 F.2d 1324, 1327, 188 USPQ 428, 432 (CCPA 1976)(emphasis in the original):

The solicitor suggests that the provision in 35 USC 135(a) that an adverse award of priority in an interference "shall constitute the final refusal by the Patent and Trademark Office of the claims involved" means that the subject matter of the counts is statutory prior art to the losing party in the same anticipatory sense as the statutory prior art described in section 102 and also within the meaning of the term "prior art" in section 103. Nothing in the legislative history of 35 USC 135(a) supports the solicitor's position. The Reviser's Note, 35 USCA 135, explains:

The first paragraph states the existing corresponding statute [R.S. 4904] with a few changes in language. An explicit statement that the Office decision on priority constitutes a final refusal by the Office of the claims involved, is added.

The Commentary on the New Patent Act, by P.J. Federico, 35 USCA at 37-38, confirms this, and states further, "The sections just mentioned, 131 to 135, deal with procedure in the Patent Office, of which only a small part is reflected in the statute." (Emphasis added.) A reading of section 135(a) confirms that all its provisions relate to procedure rather than substance.

In support of his statutory construction, the solicitor reasons that because the claims corresponding to the counts are unpatentable to the losing party, the subject matter of the counts must be statutory prior art to the losing party. The weakness of this reasoning is apparent. The purpose of section 135(a) was, in part, to provide a new procedure to economize time and work in the further prosecution of the losing party's application. The final refusal of claims by the Patent and Trademark Office may be based, inter alia, on statutory prior art or loss of right to a patent or an estoppel. The inference that the counts (i.e., the subject matter of the counts) must be statutory prior art to the losing party merely because section 135(a), as a matter of Patent and Trademark Office procedure, provides for automatic "final refusal" of claims corresponding to the counts by virtue of the adverse award of priority, is unwarranted. We specifically reject the novel proposition that 35 USC 135(a) is a statutory prior art section, and hold that neither the counts nor the subject matter of the counts is statutory prior art by virtue of this section of the statute.

8. In re McKellin, 529 F.2d 1324, 1329, 188 USPQ 432-34 (CCPA 1976):

We have considered whether the subject matter of the counts lost in the interference falls within any "prior art" paragraph of section 102 other than section 102(g), and find that it does not. *** There is no other statutory basis for finding that either the subject matter of the lost counts or the disclosure of the Maltha patent is prior art, in the sense of 35 USC 103, to appellants.

9. In re Deckler, 977 F.2d 1449, 1452, 24 USPQ2d 1448, 1450 (Fed. Cir. 1992).

10. See 49 Fed. Reg. 48440 second column lines 25-61; In re Shirmer, 69 F.2d 556, 558, 21 USPQ 161, 163 (CCPA 1934); and Avery v. Chase, 101 F.2d 204, 40 USPQ 343 (CCPA 1939), cert. den'd, 307 U.S. 638 (1939). See also 37 CFR 1.658(c) and 37 CFR 1.633(e).

11. In re McKellin, 529 F.2d 1324, 1327, 188 USPQ 428, 432 (CCPA 1976)("An applicant who has lost an interference is not entitled to claims which correspond to the subject matter of the counts of the interference. A determination of priority of invention adverse to an applicant constitutes the final refusal by the Patent and Trademark Office of the claims involved. 35 USC 135.") Emphasis in the original.

12. This argument has been vigorously advanced by the Right Honorable Edward Heller.

13. 119 F.3d 960, 43 USPQ2d 1262 (Fed. Cir. 1997).

14. 119 F.3d 960, 966, 43 USPQ2d 1262, 1266 (Fed. Cir. 1997).

15. This issue could be raised in a District Court in a suit against the Commissioner under the Administrative Procedures Act, based upon administrative action due to a statutory interpretation that was plainly erroneous. Cf. Rydeen v. Quigg, 748 F.Supp 900, 904, 16 USPQ2d 1876, 1879 (D.C.D.C. 1990).

16. Pub. L. 94-131, Nov. 14, 1975.

17. PCT Notification No. 9.

18. In re Klesper, 397 F.2d 882, 885-6, 256 USPQ 257-8 (CCPA 1968):

Quoting a portion of the above, the Patent Office brief states:

Since the Court in the Lund decision supra considered the issue "well settled" upon the basis of a carry over of subject matter from the parent application to the patented application, no further discussion of appellant's contentions respecting the statutory provisions (Sections 102(e) and 120) or the Hilmer case or the other decisions relied upon (Board and Court) appears necessary. As shown above, appellant having conceded that the patent fully meets the appealed claims, the only question at issue is whether the parent Frost application discloses the claimed subject matter.

We are in agreement with that statement.

19. See, Boyden v. Comm'r of Patents, 441 F.2d 1041, 168 USPQ 680 (D.C. Cir.), cert. denied, 404 U.S. 868, 171 USPQ 321 (1971); In re Application Papers Filed March 27, 1974, 186 USPQ 363 (Comm'r Pat. 1975); and In re Application Papers Filed June 24, 1966, 152 USPQ 29 (Comm'r 1966), with respect to the requirement to submit the filing fee. See In re Bosies, 207 USPQ 1139 (Comm'r 1979), with respect to the requirement to submit the declaration.

20. E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437, 7 USPQ2d 1129, 1135 (Fed. Cir. 1988)("Despite its concern over "secret prior art," the court in Kimberly-Clark allowed prior work to be used as prior art in a 103 context so long as it satisfied the requirements of 102(g). As stated in the concurring opinion in Kimberly-Clark [Corporation v. Johnson & Johnson and Personal Products Company, 714 F.2d 1437, 223 USPQ 603 (Fed. Cir. 1984)], the majority opinion "has extended the scope of what constitutes the prior invention of another, under §102(g), to encompass the prior work of another which has been reduced to practice." 745 F.2d at 1460, 223 USPQ at 619 (footnote omitted).").; and New Idea Farm Equipment Corporation v. Sperry Corporation, 916 F.2d 1561, ____, 16 USPQ2d 1424, 1428(Fed. Cir. 1990)("While more commonly applied to interferences, section 102(g) is indeed applicable to prior invention situations other than in the context of an interference. ").

21. Cf. Bigham v. Godtfredsen, 857 F.2d 1415, 1417, 8 USPQ2d 1266, 1268 (Fed. Cir. 1988) and 35 USC 363 with respect to a United States patent application; and In re Gostelli, 872 F.2d 1008, 1011, 10 USPQ2d 1614, 1617 (Fed. Cir. 1989) and 35 USC 119 with respect to a foreign priority application.

22. In re Clemens, 622 F.2d 1029, ___, 206 USPQ 289, ___ (CCPA 1980):

Nor can we agree with appellants' position, that only Barrett's claims constitute evidence of what Barrett invented. It is true that appellants are correct in noting that it is the claims which define "the subject matter which the applicant regards as his invention," 35 USC 112 (second paragraph). [Footnote 12 omitted.] However, it does not follow from this that the specification should be ignored in determining what a patentee invented. To the contrary, it is a fundamental principle of patent law "that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention." United States v. Adams, 383 U.S. 39, 49 (1966).... [Clemens at ___, 297; emphasis in the original.]

***

B. Foundation for 35 USC 102(g)/103 Rejection

In setting forth the Barrett rejection, both the examiner and the board rejected the claimed invention under 35 USC 103 for being obvious from the invention of another (Barrett) who had not abandoned, suppressed or concealed it. 35 USC 102(g) Limited approval of this sort of 35 USC 102(g)/103 rejection was first expressed by this court in its decision in In re Bass, [474 F.2d 1286, 177 USPQ 186] supra. In Bass, this court held that "the prior invention of another who had not abandoned, suppressed, or concealed it, under the circumstances of this case which include the disclosure of such invention in an issued patent, is available as 'prior art' within the meaning of that term in §103 by virtue of §102(g)." [Clemens at ___, 297-98; emphasis in the original.]