MPEP Q & A 135: When May the Prior Art Date of a Reference Under Pre-AIA 35 U.S.C. 102(e) be the International Filing Date?



When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date?


The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if the international filing date was on or after November 29, 2000, the international application designated the United States, and the international application was published by the World Intellectual Property Organization (WIPO) under the Patent Cooperation Treaty (PCT) Article 21(2) in the English language.

Chapter Details:

The answer to this question can be found in chapter 2100 of the MPEP. This chapter covers Patentability.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 2136 of the MPEP.  The following is a brief summary of section 2136.

2136 Pre-AIA 35 U.S.C. 102(e)

This section covers pre-AIA 35 U.S.C. 102(e). Pre-AIA 35 U.S.C. 102(e) allows the use of certain international application publications and U.S. patent application publications, and certain U.S. patents as prior art under pre-AIA 35 U.S.C. 102(e) as of their respective U.S. filing dates, including certain international filing dates.

This section includes a discussion on how statutory invention registrations are eligible as prior art under 35 U.S.C. 102 and pre-AIA 35 U.S.C. 102(e).  In addition, defensive publications are not prior art as of their filing date.  It is only prior art as of its publication date.