Antedating 102e reference

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Legal misunderstandings of the patent examiner during ex parte prosecution do not create a valid legal excuse for prosecuting attorney legal errors.

A published US patent application has a §102(e) prior art date as of that application’s filing date, and also a §102(a) or §102(b) prior art date as of its publication date.

The prior art at issue included the date “July 2001” on their face and also included a copyright date of “2001.” The Board agreed with Patent Owner that the indications of the availability of the references is inadmissible hearsay to the extent Petitioner relies on the date for the truth of that information. Notable in the Board’s analysis was the fact that the references included a statement that restricted the use and dissemination of the references.

The Board noted that at least one other panel agreed that a copyright notice as evidence that a reference was a printed publication as of a particular date is inadmissible hearsay. Ultimately, on the basis of the facts mentioned above, the Board decided that Petitioner had failed to establish that the exhibits at issue were publicly available more than one year prior to the priority date of the patent-at-issue.

I had noted the following relatively frequent source of legal confusion in current law for some patent examiners, with the result that some patent prosecutors were being dangerously misled by incomplete examiner rejections. However, getting a patent application allowed incorrectly can be fatal to the patent’s validity or even lead to inequitable conduct accusations.

PTO published patent application can qualify as prior art under .

In addition, the exhibits revealed that a significant gap of time was unaccounted for to show due diligence.

I recently retired from a position in which I was also providing legal advice to patent application prosecution attorneys and others. Often, the multiple effective dates are not reflected in examiner rejections.

Different panels of the Patent Trial and Appeal Board have, for the most part, agreed with each other on many of the key issues that arise in inter partes review proceedings.

There are, however, instances of disagreement and an example of this type of disagreement arose in Service Now, Inc. Hewlett-Packard, Inc., IPR2015-00707, wherein this particular panel of PTAB judges decided that a copyright notice on a prior art reference did not suffice to establish that the reference was publicly available as of the date of the notice.

If the published application was commonly owned at the time of its invention, a §102(e)/103 rejection can be overcome by asserting common ownership under §103(c).

The protections of §103(c) do not apply to 102(a) or 102(b) prior publications.

This led the Board to conclude that Patent Owner had not shown that Dezunno was not available as prior art against the ’836 patent under 35 U.

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