If the same application was patented in a foreign country more than 12 months before the filing of the U.S. application, a rejection under 35 U.S.C. 102(d) will be made.

There are four conditions under 102(d) that must be met for it to apply.

First of all, the foreign application must have been filed for more than 12 months before the filing date of the U.S. application. Note that the date of the U.S. parent application is used in cases concerning continuing applications.

Second, both the U.S. and foreign applications must be filed by the same applicant, his or her legal representatives, or assignees.

Third, the foreign application must have actually issued as a patent or an inventor's certificate. Basically, this means that the patent rights must be enforceable. Therefore, if the application was rejected and never patented in a foreign country, 102(d) may not be used.

Fourth and finally, the same invention must be involved. If Tony and Jay successfully patent their bug collecting apparatus in Brazil in 2000 and then try to patent an alternate insect chamber in the U.S. in 2001, they won't be barred under 102(d) because the claims are different between the two applications.

Pre-AIA 35 U.S.C. 102(d) is fairly straightforward. Just remember the four conditions. If an applicant wants to patent their invention in the U.S. and several other countries, it might be best to apply in all the countries simultaneously with a PCT application.