Examples - Non-U.S. Patent Issued

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Kate's patent application enters the U.S. national stage after having been searched and examined as an international (PCT) application that designated the U.S. Because Kate complied with PCT rules, the effective filing date of her U.S. (national) application is 2 1/2 years (30 months) before the "actual" U.S. filing date, i.e., the date her application entered the U.S. national stage. She does not have to be concerned that a South African patent issued before her application entered the national stage that was filed on 3 years before her application entered the national stage because her effective U.S. filing date is only 6 months after her South African filing date.

Hypothetical Example No. 2. Mary was granted a Brazilian patent 1 day before she filed for a U.S. application on the same invention on an application filed in Brazil 13 months before her U.S. filing date. Her U.S. application is rejected under 35 U.S.C. 102(d).

Hypothetical Example No. 3. John has maintained a chain of related (continuing) U.S. patent applications over a 6 year period. Last year, several non-U.S. patents issued on the invention he is claiming in the last application in the chain of applications, non-U.S. applications for which were filed two years ago. The USPTO grants John a patent on the invention claimed in the last application.

Hypothetical Example No. 4. Isadora files a British patent application on an early version of her invention and 1 year later files a U.S. application on the same invention, claiming priority based on filing date of the British application. Two years later, Isadora files a continuation-in-part (CIP) application that discloses and claims an improved version of her invention. The British application issues as a patent before the actual filing date of the CIP application. The subject matter added to the CIP application does not render the improved version of the invention non-obvious. Isadora is denied a U.S. patent on the improved version of her invention because the British patent became prior art before her CIP application was actaully filed and the application from which it issued was filed more than 12 months before the actual CIP application filing date.

Case Law. The following examples from U.S. case law teach this concept:

Kathawala, In re, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir. 1993)
Foster, In re, Foster, 343 F.2d 980, 145 USPQ 166 (CCPA 1965)

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