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Assume Patent A was filed on Dec. 1, 2002 in the USA, which claims its foreign priority date Jan. 1, 2002. The priority application was filed on Jan. 1, 2002 in Spain.

Assume Patent B was filed on Oct. 1, 2002, and its priority date Oct. 1, 2002.

My question is: Does Patent A filed in the USA serve as pre-AIA 102(a) prior art or pre-AIA 102(e)(2) prior art? Why? Thanks!

  • When was the Spanish application filed 1/1/2002 published? It would normally be 18 months later. – George White Apr 25 at 3:11
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It would not be prior art under pre-AIA 102(a) because it was not filed in the U.S., or published anywhere or patented in a foreign country before B. Unless it somehow had an early publication rather than the standard 18 months.

102(a) the invention was known or used by others in this country (no), or patented (no) or described in a printed publication (no/maybe) in this or a foreign country, before the invention thereof by the applicant for a patent.

It is not prior art under pre-AIA 102(e) unless the Spanish filing was actually a PCT filing (and it designated the U.S.)

102(e) the invention was described in — (1) an application for patent, published under section 122(b)(no), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States (no) before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language. (was it a PCT application that was eventually published in English?)

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  • I briefly had an answer posted that completely mis-read the question as a pre- vs post- issue. This is one pre- provision vs a different pre- provision. – George White Apr 25 at 3:27
  • Thanks, George! What if the Spanish Filing of Patent A is a PCT filing designated to the US? The Spanish filing eventually published in English as Patent A (publication date is behind the filing date of Patent B). – IP_newbie May 2 at 2:06
  • Then it could be prior art under 102(e). – George White May 2 at 2:27

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