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Fed. Cir. Holds Provisionals Are U.S. Filings For 102(E)

In case you wondered if this was a settled question in the ever-shifting world of section 102, yesterday, In re Giacomini, (Rader, C.J.), (copy at end of post) the panel held that the effective U.S. filing date of a U.S. patent asserted to be prior art against a “later-filed patent” was the filing date of the corresponding U.S. provisional application claiming the same invention.

The court did not find merit in Applicants’ argument that the outcome should be controlled by In re Hillmer, 359 F.2d 859 (CCPA 1966) in which the court held that the date of  a foreign-filed priority application was not the effective filing date of a U.S. patent asserted to be prior art under 102(e). If nothing else, the decision underscores the necessity of fully disclosing the invention generically and specifically  in a provisional filing, even if enablement and WDR may be necessarily “iffy” for early-stage technologies.

in re giacomini

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