USPTO Board Holds U.S. Provisional Application as Prior Art on its Filing Date

In Ex parte Yamaguchi (USPTO, August 28, 2008), the Board of Patent Appeals and Interferences held that U.S. provisional patent applications act as prior art under 35 U.S.C. §102(e) as their filing date, rather than the year-later filing date of any corresponding utility patent application. As noted by Professor Crouch, "This holding is in tension with the controlling precedent of In re Wertheim, 646 F.2d 527 (CCPA 1981)."

According to the five-member panel opinion by Administrative Patent Judge Jefferey,

Narayanan claims benefit under 35 U.S.C. §119(e) to Provisional Application No. 601254,437, filed December 8,2000 ("the provisional application), a date before the present application's putative foreign priority date. . . . [T]he anticipation issue in this appeal [therefroe] turns on whether Narayanan qualifies as prior art
under §102(e).

The two types of applications for patent that are relevant to this appeal are established by statute. First, §111 (a) provides for a standard written application that requires a specification, drawing, oath, and claims that must be accompanied by the requisite fee. 35 U.S.C. § 11l(a) (2002). Second, §111 (b) provides for a provisional application that must contain a specification and a drawing, the application also accompanied by the requisite fee. 35 U.S.C. § 111(b) (2002).

In sum, the statutory scheme of Title 35 indicates that Congress intended for "applications for patent" under §102(e) to apply to both regular utility applications and provisional applications, particularly when considering §111 (b) and §102(e) together. As a published "application for patent" under this statutory framework, a provisional application - like a regular utility application - constitutes prior art for all
that it teaches and, as such, promotes the progress of the useful arts.

As noted by Administrative Patent Judge Torczon in his concurring opinion,

If [this decision] is correct, In re Wertheim, 646 F.2d 527 (CCPA 1981), is no longer tenable authority.

. . . Wertheim posits a but-for theory for accepting a patent as prior art under 35 U.S.C. §102(e). According to this theory, a patent can only be prior art if it satisfies the fiction that it would have been available as of an earlier filing date but for delays in the United States Patent and Trademark Office. Thus, in Wertheim, the reference patent could not be used as of its earliest filing date because the issued claims depended on subject matter that had been added in intervening benefit applications. 646 F.2d at 536. Under the but-for test, a provisional application could never be used for a filing date under §102(e) because a provisional application cannot issue as a patent (or be a published application) without some additional action by the
applicant.

. . . Wertheim requires a strained reading of statute and precedent to address a misplaced concern about secret prior art. Were we to follow Wertheim, we would reverse. Instead, I join my colleagues in their decision to affirm.