Yamaguchi: provisional can be prior art as of its filing date

There's been some talk about Ex parte Yamaguchi (USPTO/BPAI, August 28, 2008) being in tension with the 1981 case In re Wertheim, 646 F.2d 527 (CCPA 1981).

Of course, in 1981, there were no provisional applications, and no statutes describing priority issues as to provisionals.

Going into the law review literature, one finds “Twelve Years Later: Provisional Patent Application Filing Revisited,” (89 JPTOS 437 (2007)), which clearly states:

The provisional application as of its filing date also creates §§ 102 (e) and (g) prior art for the invention as against later filed U.S. applications.

This law review article PRECEDED Yamaguchi, so, hopefully, no one was surprised by the legal points made in Yamaguchi.

102(e) states:

A person shall be entitled to a patent unless

(...)


(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language;

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See also Under §102(e), Published Applications Considered Prior Art As of Provisional Filing Date. :

In prosecution, the Examiner cited the Narayanan reference against a Texas Instruments patent application filed by Yamaguchi. The rejection identified Narayanan as prior art under 35 U.S.C. § 102(e). The issue on appeal to the BPAI was whether the Narayanan reference can be considered 102(e) prior art as of the filing date of its provisional application.

One notes that Narayan was an ISSUED patent, US 6,596,618, which claimed priority to provisional 60/254,437. The initial argument actually made by appellants was that the examiner had NOT FURNISHED a copy of the Narayan provisional and thus there was no evidence of support in the provisional. The examiner stated the provisional could be obtained from PAIR. THEN, the appellants argued the provisional did not track the issued patent.

The BPAI found that the examiner's use of the provisional filing date comported with the plain meaning of the statute. [it is not clear that the appellants argued against this point.]

See the opinion in Ex parte Yamaguchi.

***Separately

Tulare woman seeks patent for container to hold sunflower seeds, shells

on Emma Arzola