��������

In , the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the claims of the patent in accordance with 35 USC § 112. That is, a cited patent must be entitled to claim priority to its provisional application before it can qualify as prior art as of the provisional application’s filing date. The discussion of this case on has focused on the court’s interpretation of the pre-AIA version of 35 USC § 102(e). Here, I consider what it may mean for the interpretation of 35 USC § 102(a)(2)/(d) of the AIA.

Dynamic Drinkware Rests On Wertheim

The Federal Circuit’s decision in Dynamic Drinkware rests on the CCPA’s 1961 decision in In re Wertheim. In that case, the CCPA was interpreting § 102(e) in the context of a continuation-in-part relationship. The CCPA held that, for prior art purposes, a “continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application” only if the earlier application “disclose[s], pursuant to §§ 120/112, the invention claimed in the reference patent.”

The CCPA based the latter restriction (at issue in Dynamic Drinkware) on the 1926 Supreme Court decision in Alexander Milburn Co. v. Davis-Bournonville Co., which is codified in § 102(e):

[T]he rationale behind the Supreme Court decisions in Milburn and Hazeltine [is] that “but for” the delays in the Patent Office, the patent would have earlier issued and would have been prior art known to the public. The patent disclosure in Milburn was treated as prior art as of its filing date because at the time the application was filed in the Patent Office the inventor was presumed to have disclosed an invention which, but for the delays inherent in prosecution, would have been disclosed to the public on the filing date.

Does The AIA Depart From Wertheim?

The Federal Circuit used two footnotes in Dynamic Drinkware to make clear that the decision applies only to the pre-AIA version of § 102. Under the AIA, § 102(e)(2) provides that U.S. patent documents can qualify as prior art and § 102(d) defines the date as of which U.S. patent documents can qualify as prior art:

A person shall be entitled to a patent application unless—

(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

The highlighted language in § 102(d) seems to be consistent with Wertheim (expanded to reach back to non-U.S. priority dates), but the USPTO sees it differently. In the , the USPTO interprets § 102(d) as follows:

The AIA draws a distinction between actually being entitled to priority to, or the benefit of, a prior-filed application in the definition of effective filing date of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or the benefit of, a prior-filed application in the definition of effectively filed in AIA 35 U.S.C. 102(d). As a result of this distinction, the question of whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims is not at issue in determining the date the patent or published application was ‘‘effectively filed’’ for prior art purposes. Thus, as was the case even prior to the AIA, there is no need to evaluate whether any claim of a U.S. patent, U.S. patent application publication, or WIPO published application is actually entitled to priority or benefit under 35 U.S.C. 119 120, 121, or 365 when applying such a document as prior art.

This interpretation is based at least in part on the 2008 USPTO Board decision in , which held that In re Wertheim was “displaced” by the 18-month publication provisions of the American Inventors Protection Act of 1999 (AIPA), and that the prior art effect of a U.S. patent or application is not restricted by satisfaction of §112.

Does Dynamic Drinkware Turn On The Effective Date Of The AIPA?

The Board decision in Yamaguchi—and the USPTO’s interpretation of § 102(d)—can be reconciled with Dynamic Drinkware if the Federal Circuit’s reliance on Wertheim depended on the pre-AIPA filing date of the asserted patent. (U.S. Patent 7,153,555 was filed in May 2000, before 18-month publication came into effect, and so may not fall under the reasoning of Yamaguchi, although the application of the ‘555 patent was published prior to grant, in 2004) However, since the Federal Circuit did not discuss Yamaguchi or the AIPA, it is not clear that the court would draw such a line. Thus, we will have to wait for the court decide whether the “entitled … to claim the benefit of an earlier filing date” language in § 102(d) requires satisfaction of § 112 (as under Wertheim), or only satisfaction of the formal requirements for claiming priority (as per the USPTO).