The United States Court of Appeals for the Federal Circuit recently expanded the scope of prior art that will be considered subject to 35 U.S.C. Section 102(e), referred to by some as “secret prior art.” The Federal Circuit addressed the issue of whether it is appropriate to use the filing date of a provisional patent application as the effective date for a later-filed reference that is cited as prior art. In In re Giacomini,1 the Federal Circuit held that an issued patent had a patent-defeating effect as of the filing date of its provisional application.

A. Background

Applicants Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez and Donald David Shugard (collectively referred to as “Giacomini”) filed a patent application for selectively storing electronic data in a cache on November 29, 2000.2 Following rejection of the application by the primary Examiner, the Board of Patent Appeals and Interferences (the “Board”) rejected certain claims of U.S. Patent Application No. 09/725,737 (the “Giacomini application”) as anticipated under 35 U.S.C. § 102(e).3 The Board cited U.S. Patent No. 7,039,683, in the name of Tran (the “Tran patent”) as disclosing the elements of Giacomini’s claims.4

The filing date of the Tran patent was December 29, 2000, one month after the filing date of the Giacomini application. However, the Tran patent claimed priority to a provisional patent application (the “Tran provisional”) that was filed on September 25, 2000, two months prior to the Giacomini application.5 Using the filing date of the Tran provisional, the Board held that the Tran patent anticipated the claims of the Giacomini application.6

Giacomini subsequently appealed the Board’s decision.7 Giacomini did not dispute that the Tran provisional disclosed all of the features claimed by the Giacomini application.8 Giacomini also did not dispute that the Tran provisional was the first U.S. application to disclose the invention.9 Furthermore, Giacomini never disputed that the Tran provisional provided written description support for all of the features.10 Therefore, the issue in front of the Federal Circuit was whether the Tran patent should have the benefit of the Tran provisional’s filing date, making it prior art to the Giacomini application.

B. Statutes

Two relevant statutes that are important for understanding this issue are 35 U.S.C. § 102(e) and 35 U.S.C. § 119(e). The relevant portion of § 102 states that an invention is not patentable if “the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . . .”11 The relevant portion of § 119 states: “An application for patent . . . for an invention disclosed . . . in a provisional application . . . shall have the same effect, as to such invention, as though filed on the date of the provisional application . . . .”12

C. The Federal Circuit’s opinion

Giacomini primarily argued that § 119(e) allows a patent to share the date of its provisional application for priority but not for its effective reference date as prior art.13 To support this position, Giacomini cited In re Hilmer.14 In Hilmer, the predecessor court to the Federal Circuit had to determine whether a U.S. patent cited as a § 102(e) reference shared an effective reference date with its foreign priority date.15 The court in Hilmer decided that § 119 is silent as to effective reference dates and only covers “right of priority.”16 Thus, § 119 “does not provide for the use of a U.S. patent as an anticipatory reference as of its foreign filing date.”17 Using Hilmer, Giacomini argued that a U.S. provisional patent application should be treated similarly to a foreign application and, therefore, that a U.S. patent’s effective reference date should not be the priority date of its provisional application.18 Specifically, the Tran patent’s effective reference date, according to Giacomini, should not be equivalent to the Tran provisional’s filing date.19

Unpersuaded by Giacomini’s argument, the Federal Circuit explained that at the time of Hilmer, § 119 was limited to priority dates arising from a foreign application’s filing date.20 Because the authorization of provisional applications and § 119(e) post-date Hilmer, the court noted that the earlier holding regarding § 119 is not applicable to provisional applications.21 The Federal Circuit further distinguished Hilmer as creating a dichotomy between domestic and foreign filing dates.22 The Federal Circuit explained that the “history of treating the disclosure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.”23 The Hilmer court reasoned that the effective reference date of a U.S. patent does not become the filing date of an earlier filed foreign application because § 102(e) is expressly limited to the United States.24

Because activities in the United States are treated differently than activities overseas in several sections of the Patent Code, the Federal Circuit rejected Giacomini’s reading of Hilmer and thus held that there is no tension between § 102(e) and § 119 as applied to provisional applications filed in the U.S.25 Citing the principle that “one really must be the first inventor in order to be entitled to a patent,”26 the Federal Circuit affirmed that the “Tran patent had a patent-defeating effect as of the filing date of the Tran provisional.”27

D. Conclusion

The implication of Giacomini is that the universe of potentially invalidating prior art for any particular application is now larger. Because the effective reference date of a published application or patent is shared with the provisional application to which it claims priority, the published application or patent is potentially prior art to an earlier-filed application. The Giacomini decision provides examiners and patent litigants alike another avenue to finding potential prior art references for a particular patent application and, likewise, poses an additional issue of which patent applicants and their counsel should be aware.