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by Gladys H. Monroy and Barry E. Bretschneider

This update is also available on our Japanese language site.

Often, the foreign priority date of a U.S. patent application as a reference can neither be used as effective date of a reference against an application filed at the United States Patent and Trademark Office (USPTO) under the classic Hilmer doctrine, or as the effective filing date in the United States under the reservation embodied in Patent Cooperation Treaty Article 64(4)(a).  This article proposes an alternative filing strategy for foreign (non-U.S.) patent applicants filing for patents in the U.S. to overcome these pitfalls.

The inability to use a foreign priority date as effective date of a reference against an application filed at the USPTO was the subject of the infamous In re Hilmer, 359 F.2d 859 (CCPA 1966).  In that case, Hilmer filed a U.S. application claiming priority to a German application.  During the examination of the Hilmer application at the USPTO, the Examiner rejected its claims over another U.S. patent (the Habicht patent) based on a Swiss priority date of the Habicht patent, not the later U.S. filing date of the Habicht patent, because the Habicht patent’s U.S. filing date was later than the German application's priority date claimed by Hilmer’s application.  The court held that the reference's Swiss priority date could not be relied on in a 35 USC 102(e) rejection.  Because the U.S. filing date of the reference was later than the earliest effective filing date (the German priority date of the German application), the Court reversed the rejection.

Under 35 USC 102(e), the filing date of a PCT international application published in English is a prior art effective date only if it is published in English.  Yet, many foreign companies and law firms adversely, though unnecessarily, use inbound filing strategies that do not obtain this earliest possible 35 USC 102(e) date.

The Traditional Filing Strategy -- An Example

The following example shows a common filing procedure for a foreign (e.g., Japanese) company:

(1)  Company files an application in home country—Japan (e.g., January 1, 2001).

(2)  Within one year, Company files an international application ("IA") in the Japanese Receiving Office of the PCT in the Japanese language designating the U.S. (e.g., January 1, 2002).

(3)  Within 30 months from the Japanese filing date, Company files a national stage application in the U.S. with the 35 USC 371(c)(1)(2) and (4), having a fulfillment date of (e.g., June 1, 2003).

Publication of the IA by WIPO in Japanese (not in English) would occur on or around July 1, 2002.  Unfortunately, this strategy results in providing no 102(e)(1) date for the international publication, the USPTO publication, or even for a U.S. patent that issues from the national stage application.  See Textual Equivalent of Training Slides entitled "35 USC §§ 102(e) and 374 as amended by HR 2215 (Technical Correction Act)" - Date enacted: 11/02/02, date effective: 11/29/00, prepared by: Office of Patent Legal Administration (OPLA), Robert J. Spar, Director USPTO, available at http://www.uspto.gov/web/offices/dcom/olia/aipa/textpp102e.htm.  Thus, the earliest date at which the application becomes prior art is July 1, 2002, the PCT publication date under 35 USC 102(a) or (b).

The Alternative Filing Strategy

(1)  On the same day that the foreign application is filed in the foreign patent office (January 1, 2001), file that foreign application in the foreign language as a provisional application in the USPTO under 35 USC 111(b).

(2)  File an IA under the PCT in the English language in the foreign patent office within twelve months of the filing date of the provisional application claiming benefit of the provisional application (January 1, 2002).  The IA must designate the United States, and be published in the English language by WIPO (under PCT Article 21(2)).

(3)  File a certified English translation of the provisional application at the USPTO within sixteen months of the filing date of the provisional application or within four months of the filing of the IA (whichever is earlier).

(4)  File a U.S. national stage application under 35 USC 371 in the U.S. within thirty months of the filing date of the provisional application (July 1, 2003).

This strategy leverages the fact that when a U.S. patent, U.S. application publication, or WIPO publication issues from, or claims benefit to, an IA that has an international filing date on or after 11/29/00, designated the United States, and was published in English by WIPO (under PCT Article 21(2)) the 35 USC 102(e) date is the international filing date, or any earlier effective U.S. filing date.  Thus, a national stage publication filed, under 35 USC 371, on or after November 29, 2000 that was published in English under PCT Article 21(2), would obtain the benefit of the earliest possible 35 USC 102(e) date—the foreign filing date.

This simple example clarified the benefits of the alternative filing strategy.  In contrast with the traditional strategy, we assume that Company filed a provisional application on the same day as the foreign application, and filed the PCT application in the English language.  We further assume that the USPTO published the application on or around July 1, 2002 under 35 USC 122(b) and issued a patent based on the 35 USC 371 application on November 1, 2003.  Thus, using this alternative filing strategy, the 35 USC 102(e)(1) date for the WIPO publication and the USPTO publication, as well as the 35 USC 102(e)(2) date for the patent, would all be: January 1, 2001.  This is eighteen months earlier than the earliest 35 USC 102(e) date available using the traditional filing strategy.

The proposed strategy can yield additional advantages where there are related provisional and non-provisional applications.  For example, if a later-filed U.S. nonprovisional application claimed the benefit of the IA in the example above, the 35 USC 102(e) date of the patent or publication of the later-filed U.S. application would be the international filing date, assuming the earlier-filed IA has proper support for the subject matter.  Alternatively, if the IA claimed priority to an earlier-filed provisional application or the benefit of an earlier-filed U.S. nonprovisional application, the 35 USC 102(e) date for all the references would be the filing date of the earlier-filed U.S. application, assuming that application has proper support.

The consequence of using the traditional filing strategy is clear:  No benefit of the international filing date (nor any U.S. filing dates prior to the IA) is given for 35 USC 102(e) prior art purposes if the IA was published in a language other than English.  In fact, even if the IA properly claims priority to any earlier-filed U.S. application (whether provisional or nonprovisional), there would still be no 35 USC 102(e) date for all the references.  And, even if a later-filed U.S. nonprovisional application claimed the benefit of the IA in the example above, the 35 USC 102(e) date of the patent or publication of the later-filed U.S. application would be the actual filing date of the later-filed U.S. application.

Additional Advantages of the Alternative Filing Strategy

(1)  Patent Term: The pendency of a provisional application is not included in the patent term calculation, which is an advantage over filing a nonprovisional application.  In addition, the term of the U.S. patent that issues is not affected by foreign priority claims, but depending on IA.

(2)  Few Formal Requirements: Provisional applications do not require oaths or declarations from the inventors.

(3)  Lower Cost: The basic USPTO filing fee for a provisional application is currently $180 ($90 for small entities), compared to the $1,000 basic filing fee for a nonprovisional application ($500 for small entities).  Furthermore, service fees for filing provisional applications are generally much less than for filing non-provisional applications.

(4)  What could be prior art in outside the U.S. might not be prior art in the U.S.: For example, assume that the U.S. provisional application in Japanese language was filed January 1, 2001, followed by an IA in the English language in the Japanese Receiving Office on January 1, 2002, claiming the benefit of the U.S. provisional application, followed by the submission of a certified English translation of the U.S. provisional in due course, and subsequently followed by filing National Stage applications in the U.S. and Japan on July 1, 2003.  The invention in Japan was reduced to practice on November 1, 2000.  There is a prior art publication such as a publication in a technical journal dated December 1, 2000 that discloses the same invention as that in the U.S. provisional application.  In Japan, the prior art publication of December 1, 2000 would be an absolute bar against patentability.  On the other hand, the same publication of December 1, 2000 would not be an absolute bar in the U.S. because of the one-year "grace period" before filing in the U.S. under 35 USC 102(b).  Instead, the same publication would only be a 35 USC 102(a) reference against the National Stage application in the U.S.  However, a 35 USC 102(a) reference could be antedated by filing a declaration under 37 CFR 1.131.  By antedating the publication of December 1, 2000, the publication would be removed as prior art in the U.S. even though the same publication cannot be removed as prior art in Japan.  This potential benefit should not be overlooked by an applicant first filing an application in non-English language. 

(5)  Obtaining an early 102(e) date could reduce risk that a competitor will obtain claims to same or similar invention.  A big risk is that a competitor could file a patent on the same or similar invention within one year of the publication of the foreign language priority application, while neither the foreign language priority application nor the U.S. application could be cited as prior art under 35 USC 102(b) or 102(e).  Moreover, if the competitor claims the same invention, then the competitor can force the foreign company into an interference, which could be quite costly and time-consuming.