Sometimes, the examiner will cite a reference during prosecution which has an effective prior art date falling between the time that the Japanese application was filed and the U. During prosecution, the examiner cites a technical literature reference published on February 1, 2003 under 102(a). JPA USA PRIOR ART Such "intervening" references may be removed or antedated by -5- perfecting the claim to priority. submitting a verified English translation of the certified copy of the priority document (the certified copy of the Japanese application); and 2. With regard to 2 above, if material was added to the specification before filing in the U. filing date, and the reference may not be antedated with respect to those claims. R , an applicant may antedate a reference (that is not a statutory bar under 102(b)), by showing that the invention was completed in Japan or in any WTO or NAFTA country prior to the date of the prior art reference. The invention is conceived when the inventor draws the device structure, knows how to make it, knows what to do with it (utility), and discloses all of this to a third part (non-inventor). The examiner rejects the claims as being anticipated (lacking novelty) by the following U. The kokai of JPA1 laid-open October 1, 2000, and which is available as prior art under 102(a), may be antedated by perfecting the claim to priority to JPA2 filed May 1, APPENDIX 1.
This is called the "grace period" and is unique to United States patent law. The provision of 102(b) is called a "statutory bar".
application is filed within one year of the publication date.
and published by WIPO in English is available as prior art as of its PCT filing date.
patent applications: Type of US Pat Appln Publication (i) U. patent application published by the USPTO, by another, based on a regularly filed U.
An inventor's own publication can not be applied as prior art under 35 U. However, if published more than one year prior to applicant s U. filing date, even the inventor's own publication can be applied as prior art under 35 U. When the examiner cites a 102(b) reference and assuming that the rejection is well founded, the applicant must then amend the claims to distinguish over the prior art.
For example, in many countries, the inventor's public disclosure prior to filing a patent application defeats novelty. That is, a 102(b) reference cannot be removed or antedated under any -1- circumstances. provisional application and published by the USPTO under 122(b) Regularly filed U. application claiming the benefit of a foreign application and published by the USPTO under 122(b) Regularly filed U. provisional application and a foreign application, and published by the USPTO under 122(b) PCT application published by WIPO in English PCT application claiming the benefit of a U. provisional application, published by WIPO in English PCT application published by WIPO in a language other than English PCT application claiming the benefit of a U. provisional application, published by WIPO in a language other than English 102(e)(1) Prior Art Date U. This is called a constructive reduction to practice. Determining 102(e) Date in an Application Chain -4- Importantly, in an application chain, the subject matter relied upon as prior art must be disclosed in the earlier-filed application in compliance with 35 U. An invention can also be reduced to practice by filing a patent application (paper patent) that teaches how to make and use the -7- invention. The term by another includes any difference in inventive entity, even among multiple inventors.