[Patentpractice] Prior Art Question re: intersection of incorporation by reference and priority

[Scott Nielson]

My initial impression is that your analysis is correct. There isn't a requirement for different inventors in 102(b)(2), but there is for 102(a)(2). If there are not different inventors, then 102(a)(2) would not apply making the application of 102(b)(2) moot. Maybe this is what the person meant.

One thing to note is that if PCT B entered the national phase outside the US and claimed something that is anticipated by provisional A or PCT A (sounds like this wouldn't really be possible, but let's go with it for the purposes of this hypothetical), then it could run into problems with Paris Convention Article 4. However, because the benefit chain is all US applications, Paris Convention Article 4 and 35 USC 119(c) (the implementing statute for Article 4) do not apply. Instead, the benefit claims are all based on 119(e), 120, and/or 121, which have no equivalent to Article 4.


Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Timothy Snowden via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, February 29, 2024 12:30 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Timothy Snowden <Timothy at thompsonpatentlaw.com>
Subject: Re: [Patentpractice] Prior Art Question re: intersection of incorporation by reference and priority

Just to clarify, I simplified the hypothetical fact pattern while drafting the email and forgot to edit to say Provisional B disclosed subject matter B. (ignore the A, D, and E part). Here's the corrected fact pattern:

Hypothetical Fact Pattern:

  1.
Provisional Application A is filed 1/1/2017 containing subject matter A
     *
PCT A is filed 12/31/2017
     *
US application A is duly filed and matures to patent
        *
claims are amended to further limit to variation A1 that excludes variation A2
        *
no continuation pending, broadening reissue date is past
  2.
Provisional Application B is filed 1/1/2018 (1 day after PCT A is filed, and within 1 year of Provisional A) describing subject matter B but ALSO incorporating PCT A by reference
(nothing has been published from family A before Provisional B is filed)
     *
PCT B is duly filed
     *
US application B is duly filed and is still pending – claiming subject matter B (close relationship and roughly same physical structure to subject matter A, but different application / operation / optimization) – for this scenario, we don't care what happens to subject matter B.
  3.
CONTINUATION US Application B1 is filed (properly claiming priority to have an effective filing date of 1/1/2018) making use of the incorporation by reference to draw into the specification the description of subject matter A from PCT A --- and specifically claim variation A2 (excluded from claims in US patent A).
     *
There is NO priority claim to the "A" family.

NOTE: Assume all applications have at least 1 common inventor, and all applications are owned by the same entity.

Question:

  *
Can any of the "A" family applications be used as prior art against the "B1" continuation application to reject the claim to subject matter variation A2? (other than double-patenting – which is fine)

My current thinking:

  *
Family A is not prior art to Continuation B1 under 35 USC 102(a)(1) because it was not published prior to filing
  *
Family A is prior art to Continuation B1 under 35 USC 102(a)(2) (because of 35 USC 102(d)) because it has been published by now (35 USC 122b) AND has an effective filing date (1/1/2017) prior to that of Continuation B1 (1/1/2018).
  *
Family A falls under the EXCEPTION in 35 USC 102(b)(2) because the applications are commonly owned by 1/1/2018.
(NOTE: I found one commentator that indicated there had to be different inventors for this exception, but I can't find that supported in the text?)
  *
I don't think the Paris Convention or PCT modifies this finding because:
     *
the priority claims were all proper for the various national stage applications
     *
this is a 'regular' US Continuation now under US law, properly claiming priority through the "US application in the PCT B bundle" to the Provisional B – therefore, 35 USC 102(b)(2) (taking into account 35 USC 102(d), which contemplates PCT priority) excludes the prior application as prior art.

Where are the holes in this line of thought?

Thanks!


________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Timothy Snowden via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, February 29, 2024 1:21 PM
To: patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com>
Cc: Timothy Snowden <Timothy at thompsonpatentlaw.com>
Subject: [Patentpractice] Prior Art Question re: intersection of incorporation by reference and priority

I have a hypothetical that seems to be coming out one way, but I'm not trusting the outcome based on my reading of the law (as well as commentary). More specifically, I want to run my thought process by the group and see if I'm not thinking of an additional relevant code that may change the outcome.

Hypothetical Fact Pattern:

  1.
Provisional Application A is filed 1/1/2017 containing subject matter A
     *
PCT A is filed 12/31/2017
     *
US application A is duly filed and matures to patent
        *
claims are amended to further limit to variation A1 that excludes variation A2
        *
no continuation pending, broadening reissue date is past
  2.
Provisional Application B is filed 1/1/2018 (1 day after PCT A is filed, and within 1 year of Provisional A) describing subject matter A, D, and E but ALSO incorporating PCT A by reference
(nothing has been published from family A before Provisional B is filed)
     *
PCT B is duly filed
     *
US application B is duly filed and is still pending – claiming subject matter B (close relationship and roughly same physical structure to subject matter A, but different application / operation / optimization) – for this scenario, we don't care what happens to subject matter B.
  3.
CONTINUATION US Application B1 is filed (properly claiming priority to have an effective filing date of 1/1/2018) making use of the incorporation by reference to draw into the specification the description of features B & C from PCT A --- and CLAIM A, B, and C – specifically claiming variation C2.
     *
There is NO priority claim to the "A" family.

NOTE: Assume all applications have at least 1 common inventor, and all applications are owned by the same entity.

Question:

  *
Can any of the "A" family applications be used as prior art against the "B1" continuation application to reject the claim to subject matter variation A2? (other than double-patenting – which is fine)

My current thinking:

  *
Family A is not prior art to Continuation B1 under 35 USC 102(a)(1) because it was not published prior to filing
  *
Family A is prior art to Continuation B1 under 35 USC 102(a)(2) (because of 35 USC 102(d)) because it has been published by now (35 USC 122b) AND has an effective filing date (1/1/2017) prior to that of Continuation B1 (1/1/2018).
  *
Family A falls under the EXCEPTION in 35 USC 102(b)(2) because the applications are commonly owned by 1/1/2018.
(NOTE: I found one commentator that indicated there had to be different inventors for this exception, but I can't find that supported in the text?)
  *
I don't think the Paris Convention or PCT modifies this finding because:
     *
the priority claims were all proper for the various national stage applications
     *
this is a 'regular' US Continuation now under US law, properly claiming priority through the "US application in the PCT B bundle" to the Provisional B – therefore, 35 USC 102(b)(2) (taking into account 35 USC 102(d), which contemplates PCT priority) excludes the prior application as prior art.

Where are the holes in this line of thought?

Thanks!
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