December 2010 Issue

The Federal Circuit Says

“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”  In re Giacomini, No. 09-1400, slip op. at 5 (Fed. Cir. July 7, 2010).  In In re Giacomini, the Federal Circuit affirmed the USPTO’s rejections of an application over a patent based on the filing date of that patent’s priority provisional application.  Additionally, the Court reminded the patent bar of the principles and applications of 35 U.S.C. § 102(e).

The Giacomini application was filed on November 29, 2000.  The USPTO, however, rejected certain claims of the application as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 7,039,683 (“the ’683 patent”), which was filed on December 29, 2000.  Although Giacomini did not dispute the USPTO’s finding that the ’683 patent taught all of the claimed features in the application, Giacomini argued that the ’683 patent failed to qualify as prior art because the filing date of his application antedated the filing date of the ’683 patent.  The Court disagreed.

The Federal Circuit concluded that the ’683 patent had a patent-defeating effect as of the filing date of its provisional application, which was filed on September 25, 2000, or over two months prior to Giacomini’s application, because the provisional application qualified as an “application for patent” for the purposes of  § 102.  The Court then reasoned that since 35 U.S.C. § 119(e) provides for treating a nonprovisional application as though it was filed on the date of its corresponding provisional application, and Giacomini failed to argue a lack of written description support in the ’683 patent’s provisional application, the ’683 patent would prevent Giacomini from receiving a patent covering the same subject matter disclosed in the ’683 patent.

The Court reasoned that its conclusions are consistent with the spirit of the patent system’s goals to award patent rights to the first inventor.  Slip op. at 6.  If Giacomini’s application were allowed, it would create the irregular result of awarding a patent to someone who was not the first to invent in the United States.  Id. at 7.

The Giacomini decision reminds us of the importance of filing patent applications as early as possible, even if those applications are provisional applications.  Early filings may not only help to avoid potentially intervening prior art, but may also prevent “late” filers from securing patent rights.