Application of Hans Hilmer, Gerhard Korger, Rudi Weyer and Walter Aumuller
359 F.2d 859, 53 C.C.P.A. 1288 (1966)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Under 35 U.S.C. § 102(e), the effective date of a U.S. patent as a prior art reference is its filing date in the United States, not an earlier foreign priority date to which the patentee may be entitled under 35 U.S.C. § 119.
Facts:
- Habicht filed a patent application in Switzerland on January 24, 1957.
- Wagner et al. filed a patent application in the United States on May 1, 1957.
- Appellants (Hilmer, Korger, Weyer, and Aumuller) filed a patent application for certain sulfonyl ureas in Germany on July 31, 1957.
- Habicht filed a U.S. patent application on January 23, 1958, claiming priority to his earlier Swiss filing date.
- Appellants filed their U.S. patent application on July 25, 1958, claiming priority to their earlier German filing date.
- The appellants' German filing date is after Habicht's Swiss filing date but before Habicht's U.S. filing date.
- Habicht's U.S. application matured into Patent No. 2,962,530.
Procedural Posture:
- An interference proceeding (No. 90,218) was declared between the appellants and Habicht.
- Appellants conceded priority of the invention of the single interference count to Habicht.
- The patent examiner then rejected claims 10, 16, and 17 of the appellants' application on grounds of obviousness under 35 U.S.C. § 103.
- The examiner's rejection cited Habicht's patent as a primary reference and a patent to Wagner et al. as a secondary reference, using Habicht's Swiss filing date as the effective date of the prior art.
- Appellants appealed the rejection to the Patent Office Board of Appeals.
- The Board of Appeals affirmed the examiner's rejection, overturning its prior practice and holding that a U.S. patent is effective as a reference as of its foreign priority date.
- Appellants, as the losing party, appealed the Board's decision to the United States Court of Customs and Patent Appeals.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does 35 U.S.C. § 119 give a U.S. patent effect as a prior art reference under 35 U.S.C. § 102(e) as of its foreign priority filing date, rather than its U.S. filing date?
Opinions:
Majority - Rich, Judge
No. 35 U.S.C. § 119 does not modify the express provision of § 102(e) that a reference patent is effective as prior art only as of the date its application was 'filed in the United States.' The court reasoned that § 119 and § 102(e) deal with unrelated concepts and have different historical origins. Section 119 provides a 'right of priority' intended as a personal benefit to an applicant to overcome intervening prior art, consistent with international conventions. It is a provision to save an application, not a provision to defeat another's. In contrast, § 102(e), which codifies the rule from Alexander Milburn Co. v. Davis-Bournonville Co., is a patent-defeating provision that explicitly limits its effect to applications 'filed in the United States.' The court found that extending the Milburn rule to foreign filing dates would improperly expand the use of 'secret' prior art, contrary to U.S. patent policy, which generally limits patent-defeating knowledge and acts to those occurring 'in this country.' Furthermore, the court held that the Patent Office's long-standing administrative practice of not giving reference patents effect as of their foreign filing dates was implicitly ratified by Congress when it reenacted the relevant statutes in the 1952 Patent Act without substantive change.
Dissenting - Worley, Chief Judge
Yes. A U.S. patent should be effective as a prior art reference as of its foreign priority date. The dissent argued for a plain-language interpretation of § 119, which states that a U.S. application claiming foreign priority 'shall have the same effect' as if it were filed on the foreign date. The majority, in the dissent's view, improperly legislates words of limitation into the statute that Congress did not include. The dissent dismisses the majority's reliance on prior administrative practice and legislative ratification, arguing that the case law was unsettled and that the Patent Office should be permitted to correct its own prior misinterpretation of Congressional intent. The dissent concludes that the clear language of the statute should control, and that 'same effect' should apply for all purposes, including for use as a prior art reference.
Analysis:
This landmark decision clarifies that 35 U.S.C. § 119 is a shield for an applicant, not a sword to be used as prior art against others. It prevents foreign patent applications, which are secret and unknown in the U.S., from being used to invalidate U.S. patent applications as of their foreign filing date. The ruling establishes a clear distinction between an applicant's right to claim priority and the effective date of a patent as a reference, reinforcing the territoriality of U.S. patent law and the specific language of § 102(e). This prevents a massive expansion of 'secret prior art' and provides certainty for inventors and practitioners evaluating patentability based on what is on file in the United States.
