Tuesday, July 13, 2010

In re Giacomini: Federal Circuit confirms use of provisional filing date as priority date

Takeaway: In a case of statutory construction of § 102(e), the Federal Circuit confirmed the long standing PTO practice of using the provisional filing date as the effective filing date of a US patent or patent publication claiming priority to that provisional. See In re Giacomini (CAFC 2009-1400). This decision also confirms that to obtain this priority date, the patent or patent publication must provide written description support under § 112 First, though that wasn't at issue in this particular case.

My two cents: Nothing new here. This has been PTO practice for years (see MPEP 2163.04), and the BPAI upheld the PTO practice in Ex parte Yamaguchi, a precedential decision from a couple of years ago. But apparently this is the first time the Federal Circuit has actually addressed the issue.

Related posts: I also blogged here and here about Giacomini and the 102(e) issue. Giacomini at the BPAI also involved an interesting indefiniteness issue, which I blogged about here.

1 comment:

  1. The issue is the case is more:

    1. what is the *offensive* date for a reference claiming priority to a provisional app, when that reference is applied in rejecting another application


    2. what is the *defensive* date (e.g. effective filing date) allowing an application to claim priority to a provisional and thereby overcome intervening prior art.

    2 has been standard practice, of course - it's the whole point of filing provisional applications. But it's not clear to me that 1 has been standard practice. That's why the Board and CAFC had to decide these cases, I believe.

    BTW your link the MPEP cite is broken.