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Let's say John applied for a patent in Germany on Jul 7, 2012, but did not apply for a patent of the same invention, that is, a patent which John could claim priority, in the US until Jul 7, 2013. Now, the German patent application is going to be published on Jan 7, 2014.

In this situation, if Bob, who has independently invented what is same as the invention disclosed in John's German patent application, applies for a patent in the US with his own invention, within Jan 7, 2014, is Bob's application patentable?

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1 Answer 1

A question for the new post-AIA patent bar exam?

No, Bob should not get a patent. Under the post-AIA, post March 15th 2013, section 102(a)(2) the fact that the filing date of John's preceded Bob's makes John's patent prior art to Bob's even though John's was not filed in the US but only because he later did file in the US getting priority from the German application.

Under the old section 102(e) that was in effect for applications filed on or after March 16 2012, foreign filings did not get a 102(e) date, only US filings (and PCT filings at a the time they where translated into English and the US national stage entry fees where paid)got a 102(e) priority date. However, pre-AIA, an interference might be declared between John's US application and Bob's. Under 102(g)(1) the issue would be Bob's invention date, not his filing date.

Separately, if you were trying to concoct a hypothetical where John missed his Paris 1 year priority date you need to make John's US filing date July 8th 2013.

The un-asked part of this answer that imagines a pre-AIA scenario might not be 100% correct. I was taking the opportunity to demonstrate that patent law is deep, subtle and arcane. You can read about new 102(a)(1) vs old 102(e) + 102(g)(1) specifically on page 63 of UNDERSTANDING THE AMERICA INVENTS ACT AND ITS IMPLICATIONS FOR PATENTING in a 2012 issue of the AIPLA Quarterly.

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