In a rare precedential opinion, the U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences (BPAI) recently affirmed the position stated in the Manual of Patent Examination Procedure (MPEP) that the critical date, used for determining whether a reference is "prior art," reaches back to the filing date of an underlying provisional application. Ex parte Yamaguchi, Appeal No. 2007-4412 (BPAI, Aug. 29, 2008) (Jeffrey, APJ; Torczon, APJ, concurring).
At issue was whether the critical reference date for an allegedly invalidating U.S. patent extended to the filing date of a provisional patent application to which it claimed priority. Under Section 102(e), a U.S. patent or U.S. patent application publication obtains, subject to limitations mainly relating to applications claiming the benefit of a foreign patent filing, a critical date corresponding to the earliest filing to which it claims priority. For Yamaguchi, a particular U.S. patent was available as prior art only if its underlying provisional application filing date was considered to be the Section 102(e) filing date.
The BPAI concluded that under the current statutory scheme, in cases in which there is an underlying provisional application, a U.S. patent application or U.S. patent application publication is prior art as of the filing date of the provisional application. Procedurally, the examiner bears an initial burden of establishing that the provisional application supports the subject matter relied upon for a rejection. At least in this case, the burden was allowed to be carried by a "somewhat terse and conclusory" statement. Once carried, the burden shifts to the applicant to explain why the support alleged by the examiner is lacking. Yamaguchi failed to carry this burden, having offered "a mere conclusory statement totally devoid of explanation or analysis."
The opinion directly acknowledges a conflict with In re Wertheim, a decision by the Federal Circuit's predecessor court regarding the critical date for continuation-in-part applications under Section 102(e). Under Wertheim, a provisional application arguably could not be used for a Section 102(e) critical date. However, the BPAI stated that the rationale for Wertheim no longer applies under the current statutory scheme, which includes provisional applications and 18-month publication of applications, coupled with the easy availability of underlying provisional applications online. Thus, the BPAI refused to follow Wertheim.
Practice Note: Although the BPAI asserts that the current statutory scheme supports the result for Section 102(e) as a whole, it appears to be in firmer footing for 102(e)(2). Additionally, the conflict with appellate precedent appears to make this issue ripe for appeal.
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