On April 5, 2018, the U.S. Patent and Trademark Office ("USPTO") revised MPEP § 2136.03 to provide additional guidance regarding the effective prior art dates of references cited under pre-AIA 35 U.S.C. § 102(e). Pre-AIA § 102(e) prohibits an applicant from receiving a patent if the invention was described in a third party's published patent application or granted patent that was filed before the applicant's date of invention.
But what if the published patent application or granted patent was filed after the applicant's date of invention, but claims priority to a provisional application that was filed before applicant's date of invention? In light the Federal Circuit's decision in Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), the USPTO revised MPEP § 2136.03 in January 2018 to indicate that granted patents (i.e., U.S. patents) have effective prior art dates under § 102(e) based on the filing date of an underlying provisional application only if the subject matter relied upon in the patent is described in the provisional application, and at least one of the issued claims is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. § 112, first paragraph.
Late last year, the Federal Circuit decided Amgen v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017), which extended this principle to published patent applications (i.e., U.S. patent application publications and international application publications). Accordingly, on April 5, 2018, the USPTO further revised MPEP § 2136.03 to indicate that, as with granted patents, the critical reference date under § 102(e) for published patent applications may be the filing date of an underlying provisional application if the subject matter relied upon in the published application is described in the provisional application, and at least one of the claims of the published application is supported by the written description of the provisional application.
In light of these changes, patent applicants facing rejections under § 102(e) should look for ways to argue that none of the claims of the cited reference are supported by the underlying provisional application. On the other hand, applicants looking to bolster the prior art effect of their patent application should consider presenting at least one claim that has full § 112 support in the provisional application before the application publishes.
A copy of the USPTO's Memorandum discussing the update to MPEP § 2136.03 can be accessed here.
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