In In re Giacomini, the Court of Appeals for the Federal Circuit, affirming a decision by the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences, held that a U.S. patent claiming the benefit of a U.S. provisional application under 35 U.S.C. § 119(e) is accorded an effective 35 U.S.C. § 102(e) date as of the filing date of the provisional application.
Section 102(e) bars patentability if an invention was described in a published application or in a patent granted on an application for patent by another filed in the U.S. before the date of invention. The Federal Circuit emphasized that § 102(e) explicitly requires that the referenced earlier application be filed in the U.S.
Citing 35 U.S.C. §§ 111(b) and 119(e), the court reasoned that the language of § 102(e) grants anticipatory power to U.S. patents based on both U.S. provisional and U.S. non-provisional applications, provided the provisional application includes a written description supporting the claimed invention.
In its decision, the Federal Circuit discussed In re Hilmer, 359 F.2d 859 (CCPA 1966), in which the predecessor court held that a U.S. patent’s § 102(e) priority date does not extend to its § 119 foreign filing date. The court noted that In re Hilmer clarified that domestic and foreign filing dates stand on entirely different footings because § 102(e) explicitly requires the earlier application to be filed in the U.S.
When filing provisional U.S. applications, practitioners should ensure the disclosure provides an adequate and enabling description of the invention, not only to ensure an earlier filing date for patentability purposes, but also to establish an earlier patent-defeating date.