BEST MODE for Patent Practitioners: Bypassing Traps of the Bypass Application

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Although the America Invents Act (AIA) patent practice enters its eighth year of existence, many patent applications are still pending before the AIA. This requires practitioners to remain vigilant about whether the exam is being conducted as part of the pre-AEI practice and ensure that the pre-AEI rules are being applied correctly. In this context, it is essential for practitioners to check whether the examiners of the US Patent and Trademark Office (USPTO) are properly applying the denials before AIA 35 USC § 103 in order to avoid the scope of claims unnecessarily affecting the disqualified state of the art is assigned. This can be challenging as the priority chain for a prior art reference can get quite complex, especially when cited references include priority for PCT applications, non-English disclosures and provisional applications.

As explained in MPEP § 1896, applicants can claim priority of a PCT application in two different ways, the most common of which is to submit an application for a national phase under 35 USC § 371. Pursuant to 35 USC Section 365 (c), a. A regular national application filed pursuant to 35 USC Section 111 (a) and 37 CFR 1.53 (b) (which allows for “child” or “follow-up applications”) may benefit from Claim filing dates of an international application that designates the United States without meeting the requirements for entry into the national phase under 35 USC Section 371. An application filed in this manner as a US child application of a PCT application is referred to as a “bypass” application .

Understanding this difference is important as a patent application may be cited as prior art under certain circumstances when it is published. How this publication claims its primary benefit can determine whether a rejection according to AIA 35 USC § 103 has been properly made.

The Patent Examination Process Manual (MPEP) provides guidelines and examples to illustrate the effective prior art data of potential prior art references. Similar to Example 8 in MPEP § 2136 (I) and as shown in the following figure, it is assumed that an examiner is citing a US advance publication of a “bypass” continuation request filed on May 1, 2003 and published July 1, 2003 (blue) claiming precedence over a PCT application filed on March 1, 2001 (orange) and published in a non-English language on September 1, 2002 (red).

The PCT application continued the chain of priority claiming priority from a US provisional application filed on February 1, 2001 (yellow). If an application filed on April 1, 2003 (black box) is rejected, an examiner can claim that the effective filing date of the US advance publication (blue) is the filing date of the PCT application (orange) or even the filing date of the US provisional Registration (yellow). That would be wrong.

As explained in MPEP § 2136.03 (II) (A) (A), the PCT filing date (orange) is not to be treated as a US filing date in this case. Instead, the US prior publication may only be used under pre-AIA 35 USC 102 (e) (1) and (2) on the filing date of the continued “bypass” filing claiming the benefit of the PCT filing – in this case, May 1, 2003 (green).

While filing the “bypass” application may appear that the effective filing date of the publication prior to grant in the US is February 1, 2001 (yellow), so the applicant’s filing date is prior to the actual filing date of this US American pre-grant publication under Pre-AIA 35 USC 102 (e) (1) and (2) is actually May 1, 2003 (green) as shown in the timeline above.

As a result, for the sample application with an effective filing date of April 1, 2003, the examiner cannot properly reject the AIA 35 USC Section 103 citing the “Bypass” application, as its true effective date is after the filing date.

The above is just one example of the potential pitfalls applicants should consider when analyzing a prior art examiner’s rejections. It is therefore important that applicants know the AEI status of their applications and carefully review the priority chain of all prior art references to determine the correct effective date.

Copyright 2021 Squire Patton Boggs