Examples - Patented in U.S. via PCT Route

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Henry files a U.S. patent application on his invention. The Examiner rejects his application using an U.S. patent issued to Thomas. Thomas's patent was based on a PCT application that designated the U.S and that entered the national stage one month before Henry filed his patent application. Henry was able to show that his date of invention was three months before his filing date (i.e., he was able to "swear behind" the reference and overcome the rejection.

Hypothetical Example No. 2. Sarah files a first U.S. patent application on her invention and then files a continuing (related) PCT application on the same invention during the pendency of her first U.S. application. She then abandons her first U.S. patent application and one month later files a second U.S. patent application as a continuing application of both her first (abandoned) U.S. application and her PCT application. Sarah's application issues as a U.S. patent. Two months before Sarah's second U.S. application is filed, Oliver independently invents the same invention and files a U.S. patent application on his discovery. Oliver's application is rejected under 35 U.S.C. 102(e) because the effective date of Sarah's patent is the filing date of her first patent application.

Hypothetical Example No. 3. Beulah files an international patent application that designates the U.S. on an invention that she concieved and reduced to practice in France. Thirty months later her application enters the U.S. national stage and 12 months after that it issues as a U.S. patent. Just before Beulah's application enters the national stage, Bessie independently conceives and reduces to practice the same invention in the U.S. Six months later Bessie files a U.S. patent application on the invention which issues as a U.S. patent which she exclusively licenses to a manufacurer. When the manufacturer is sued for patent infringement by Beulah, Beulah's patent is invalidated by the court because Bessie can show that she was the "first to invent" under U.S. rules in that she completed the invention in the U.S. before Beulah's PCT application entered the U.S national stage.

Hypothetical Example No. 4. Amelia and Isadora work for Widgets Inc. and are under an obligation to assign their inventions to their employer. Together, they are listed as joint inventors in an international patent application that designates the U.S. that is filed by Widgets Inc. on their invention. Nineteen months later Widgets Inc. files a Demand for international preliminary examination and the resulting Written Opinion indicates that the invention is novel and non-obvious and has industrial applicability. Widgets Inc. deposits with the USPTO the three items required to enter the national stage in the name of Amelia and Isadora. One month after Amelia and Isadora's application enters the national stage, Amelia leaves Widgets Inc. and joins NewWidgets Inc. which files a U.S. patent application on a very similar invention with the USPTO listing only Amelia as the sole inventor. The USPTO provisionally rejects New Widgets Inc.'s (Amelia's) application under 35 U.S.C. 102(e) using the joint U.S. national stage application as a reference and a priority contest ensues to identify the true first inventor.

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

Erlich, Ex part, 3 USPQ2d 1009 (Bd. Pat. App. & Inter. 1987)
Klesper, In re, 397 F.2d 882, 158 USPQ 256 (CCPA 1968)
Wertheim, In re, 646 F.2d 527, 209 USPQ 554 (CCPA 1968)

Return to Home

© 1998-2003 Robert M. Hunter PLLC