General. The following hypothetical examples teach this concept:
Hypothetical Example No. 1. The USPTO grants a patent to Martha, Hedy and Thomas on their novel widget. One day after the trio's application was filed, Oliver invents a widget that is patentably indistinct from (the same as) the trio's widget. The USPTO denys a patent to Oliver using the trio's patent as a reference under 35 U.S.C 102(e).
Hypothetical Example No. 2. Joint inventors, Beulah and Alexander, file a U.S. patent application on their invention. Each has contributed to the conception of at least one of the claimed inventions in the application. One day later, Alexander files a U.S. patent application on a particular embodiment of the invention. When the Examiner makes a provisional rejection of Alexander's application under 35 U.S.C 102(e), Alexander is able to prove that his date of invention as a sole inventor of the particular embodiment was earlier than Beulah and Alexander's filing date. The USPTO grants a patent to Alexander on the particular embodiment and grants another patent to Beulah and Alexander on the other embodiments.
Hypothetical Example No. 3. Sybilla and Marie file a continuation-in-part (CIP) application on their invention, the disclosure of which is supported by a earlier-filed, related, original application. Sybilla and Marie have a falling out and Marie files a third application on the invention. When her application is provisionally rejected under 35 U.S.C. 102 (e) based on the filing date of the CIP application, Marie can and does "swear behind" the filing date of the CIP application but not behind the filing date of the original application. The Examiner maintains the rejection because, in this instance, the effective filing date of the CIP application is the actual filing date of the original application, and Mary cannot prove a date of invention before the filing date of the original application.
Hypothetical Example No. 4. Galileo and Henry are granted a U.S. patent on their joint invention by the USPTO extremely rapidly. Henry then files a U.S. patent application on an invention that is described in the application that claimed the joint invention. Henry perfects a claim to priority in a foreign application with a filing date just before the filing date of the joint application and is, thereby, able to prove an earlier date of invention than the filing date of the joint application. The USPTO grants a patent to Henry.
Case Law. The following examples from U.S. case law teach this concept:
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