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Filing Date of Provisional Application Can Have Patent-Defeating Effect

09-1400
July 07, 2010

Decision icon Decision

Last Month at the Federal Circuit - August 2010

Judges: Gajarsa, Dyk, Rader (author)

[Appealed from: Board]

In In re Giacomini, No. 09-1400 (Fed. Cir. July 7, 2010), the Federal Circuit affirmed the Board’s rejection of certain claims of U.S. Patent Application No. 09/725,737 (“the Giacomini application”) as being anticipated under 35 U.S.C § 102. 

The Giacomini application was filed on November 29, 2000, entitled “Method and Apparatus for Economical Cache Population.”  The Board rejected certain claims of the Giacomini application as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 7,039,683 (“the Tran patent”).  The Board found, and Giacomini did not dispute, that the Tran patent teaches all of the claimed features in Giacomini’s application.  The central issue at the Board was the eligibility of the Tran patent to serve as prior art under 35 U.S.C. § 102(e).  The Tran patent’s filing date is December 29, 2000.  However, the Tran patent claims priority to a provisional application (“the Tran provisional”) filed on September 25, 2000.  The Board held that the Tran patent had a patent-defeating effect as of the filing date of the Tran provisional.  Giacomini appealed the Board’s decision.

In its analysis of § 102(e), the Court noted that an application that a patent was “granted on” is the first U.S. application to disclose the invention claimed in the patent.  The Court further noted that under 35 U.S.C. § 111(b)(8), “applications for patent” under § 102 includes both provisional and non-provisional patent applications.  Slip op. at 4-5.  Thus, the Court concluded that an 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.

 

“[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.”  Slip op at 5.

The Court found that the Tran provisional from which Tran claims priority under 35 U.S.C. § 119(e) discloses Giacomini’s claimed invention.  The Court also noted that, although 35 U.S.C. § 119 requires that the provisional application provide written description support for the claimed invention, Giacomini never argued that the Tran provisional failed to do so and, therefore, waived the argument by failing to raise it below.  Thus, the Court stated that Giacomini, who filed his application after Tran filed his provisional application, could not receive a patent covering the same subject matter under 35 U.S.C. § 102(e).

Giacomini contended that although the Tran patent claims the benefit of priority to the Tran provisional, the Tran patent did not have a patent-defeating effect as of the Tran provisional’s filing date, citing In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966).  The Court rejected Giacomini’s argument, stating that at the time of the Hilmer decision, Congress had not yet enacted § 119(e).  Thus, the Court stated that the broad language in Hilmer concerning § 119 is not applicable to provisional applications.  The Court also noted that Hilmer involved an earlier foreign application, while the present case dealt with an earlier U.S. provisional application.

Accordingly, the Court affirmed the Board’s rejection of certain claims of the Giacomini application under 35 U.S.C. § 102(e), because the invention was described in a patent claiming priority to a U.S. provisional application filed before Giacomini’s filing date.

Summary authored by Sulay D. Jhaveri, Ph.D., Esq.