{"id":2589,"date":"2010-07-10T15:47:15","date_gmt":"2010-07-10T21:47:15","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=2589"},"modified":"2010-07-10T15:48:15","modified_gmt":"2010-07-10T21:48:15","slug":"death-knell-for-in-re-hilmer","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=2589","title":{"rendered":"Death Knell for In re Hilmer?"},"content":{"rendered":"

The Federal Circuit recently addressed the In re Hilmer<\/span>, 359 F.2d 859 (CCPA 1966) case in its decision in In re Giacomini<\/span>, 2009-1400 (Fed. Cir. July 7, 2010).\u00a0 In re Hilmer<\/span> stands for the proposition that a U.S. patent claiming priority to a foreign application has a 102(e) date as prior art as of its U.S. filing date rather than the foreign application filing date.\u00a0 In contrast, such\u00a0a U.S. patent has a priority date as of the date of the foreign application filing date.\u00a0 This has led to the analogy that a foreign application can be used as a shield but not as\u00a0a sword.<\/p>\n

In In re Giacomini<\/span>, the Federal Circuit noted that a U.S. non-provisional patent application claiming the benefit of a U.S. provisional application is accorded an effective 102(e) date as of the filing date of the U.S. provisional application.\u00a0 And, the U.S. non-provisional\u00a0application is also entitled to the priority date of the U.S. provisional application.\u00a0 Hence, the U.S. provisional application can serve as both a shield and a sword.<\/p>\n

Because various treaties require that foreign applications be treated the same as domestic applications, this has raised the issue of whether In re Hilmer<\/span> is still good law — especially in view of the In re Giacomini<\/span> decision.\u00a0 Since not all foreign countries are signatories to the various treaties with the U.S., the analysis may boil down to an analysis of which foreign country serves as the basis for the priority patent application.\u00a0 To phrase that another way, In re Hilmer<\/span> addressed all foreign countries.\u00a0 The proposed change\u00a0in the law is based on according treaty members equal\u00a0treatment based on treaties to which those select foreign countries are signatories with the United States.\u00a0 Since not all foreign countries were signatories to those treaties, the prior art effect of U.S. applications claiming the benefit of\u00a0foreign applications that were filed in non-signatory countries might still need to\u00a0be analyzed under In re Hilmer<\/span>.<\/p>\n

The panel in In re Giacomini<\/span> wrote the following with respect to In re Hilmer<\/span>:<\/p>\n

\n

Giacomini\u2019s distinction between priority date and ef-fective reference date largely stems from In re Hilmer<\/em>, 359 F.2d 859 (CCPA 1966). The issue in Hilmer <\/em>was whether a U.S. patent, cited as a section 102(e) prior art reference, was effective as of its foreign filing date under section 119. Id. <\/em>at 862. This court\u2019s predecessor rejected the Board\u2019s conclusion that \u201cthe foreign priority date of a U.S. patent is its effective date as a reference.\u201d Id. <\/em>at 870. The court instead held that \u201cSection 119 only deals with \u2018right of priority.\u2019 The section does not provide for the use of a U.S. patent as an anticipatory reference as of its foreign filing date.\u201d Id. <\/em>at 862. Thus, Hilmer <\/em>distinguished a patent\u2019s priority date under section 119 and effective reference date under section 102(e) in cases involving an earlier foreign application. Giacomini equates a U.S. provisional application to a foreign patent application to argue that the Tran provisional\u2019s filing date is not the Tran patent\u2019s effective date as a prior art reference. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

But at the time this court\u2019s predecessor decided Hilmer<\/em>, section 119 only governed the benefit of claiming priority to an earlier filing date in foreign countries. Id. <\/em>at 862. Congress added section 119(e) along with the enactment of provisional applications in 1994. See <\/em>Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4809 (1994). Therefore, broad language in Hilmer <\/em>concerning section 119 is not applicable to provisional applications. Also, Giacomini misses an important distinction between Hilmer <\/em>and the present case. Hilmer <\/em>involved an earlier foreign application while the present case deals with an earlier U.S. provisional application. See Klesper<\/em>, 397 F.2d at 885 (Hilmer <\/em>clarified that \u201cdomestic and foreign filing dates stand on entirely different footings.\u201d). <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Section 102(e) codified the \u201chistory of treating the dis-closure of a U.S. patent as prior art as of the filing date of the earliest U.S. application <\/em>to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.\u201d Id. <\/em>(emphasis added). According to Hilmer<\/em>, an earlier foreign application does not shift a corresponding patent\u2019s effective reference date because section 102(e) explicitly requires the earlier application to be \u201cfiled in the United States.\u201d Hilmer<\/em>, 359 F.2d at 862 (quoting 35 U.S.C. \u00a7 102(e)). This court\u2019s predecessor warned that section 119 cannot be read with section 102(e) to modify the express domestic limitation. Id. <\/em>In contrast, an earlier provisional application is an application \u201cfiled in the United States.\u201d 35 U.S.C. \u00a7 102(e). Treating a provisional application\u2019s filing date as both the patent\u2019s priority date and its effective reference date does not raise the alleged tension between sections 102(e) and 119. Given the \u201cclear distinction between acts abroad and acts here,\u201d Hilmer<\/em>, 359 F.2d at 879, Giacomini\u2019s reliance on Hilmer <\/em>is misplaced. Id. <\/em><\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Accordingly, the Tran patent has a patent-defeating effect as of the filing date of the Tran provisional, or September 25, 2000. Giacomini did not file his application until months after Tran filed his provisional application. Giacomini is not the first to invent in the United States and thus is not entitled to a patent. Because this court affirms the Board\u2019s finding of anticipation based on the Tran patent, this court will not review the Board\u2019s finding with respect to the Teoman patent.<\/span><\/span><\/p>\n<\/blockquote>\n

You can listen to Chief Judge Rader, Judge Gajarsa, and Judge Dyk discuss the viability of In re Hilmer<\/span> with PTO Associate Solicitor Thomas Stoll here: [Listen<\/a>].<\/p>\n

You can read the In re Giacomini<\/span> opinion here: [Read<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

The Federal Circuit recently addressed the In re Hilmer, 359 F.2d 859 (CCPA 1966) case in its decision in In re Giacomini, 2009-1400 (Fed. Cir. July 7, 2010).\u00a0 In re Hilmer stands for the proposition that a U.S. patent claiming priority to a foreign application has a 102(e) date as prior art as of its […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2589"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2589"}],"version-history":[{"count":16,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2589\/revisions"}],"predecessor-version":[{"id":2606,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2589\/revisions\/2606"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2589"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2589"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2589"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}