In re Hilmer - 53 C.C.P.A. 1288, 359 F.2d 859 (C.C.P.A. 1966)

Rule:

35 U.S.C.S. § 119 does not modify the express provision of 35 U.S.C.S. § 102(e) that a reference patent is effective as of the date the application for it was "filed in the United States."

Facts:

Appellants' application was filed subsequent to the Swiss filing date of Habicht but prior to the U.S. filing date of the Habicht application. The patent office, overturning an administrative interpretation of nearly 40 years standing by giving a United States patent effect as prior art as of the foreign filing date under 35 U.S.C.S. § 119, rejected appellant’s application. The patent office held that the claimed compounds were unpatentable over the primary reference in view of the secondary reference which rendered them obvious to one of ordinary skill in the art. Appellants challenged the interpretation, contending that the Habicht disclosure cannot be utilized as anticipatory art.

Issue:

Could the foreign filing date be the basis of declaring a United States patent as prior art?

Answer:

No.

Conclusion:

The court concluded that the patent office erred in reading § 119 together with 35 U.S.C.S. § 102(e) to give effect to the foreign filing date of the referenced patent in making a determination. The court held that 35 U.S.C.S. § 119 did not modify the express provision of 35 U.S.C.S. § 102(e), which provided that a referenced patent was effective as of the date the application was filed in the United States. 35 U.S.C.S. § 119 gave only a positive right to an applicant who had first filed abroad to protect against possible intervening patent-defeating events in obtaining a patent, with no impact on the effective date of a United States patent as a reference under 35 U.S.C.S. § 102(e). Thus, the patent office erred in relying on the foreign filing date for the referenced patent in rejecting appellants' patent claims.