Application of Hans Hilmer, Gerhard Korger, Rudi Weyer and Walter Aumuller
57 C.C.P.A. 985, 424 F.2d 1108 (1970)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
The foreign filing date of a U.S. patent, granted for priority purposes under 35 U.S.C. § 119, cannot be used to establish a date of invention 'in this country' under 35 U.S.C. § 102(g) for the purpose of making that invention prior art against another applicant.
Facts:
- On January 24, 1957, an inventor named Habicht filed a patent application in Switzerland.
- On July 31, 1957, inventors Hilmer et al. (Hilmer) filed a patent application for a related invention in Germany.
- On January 23, 1958, Habicht filed a corresponding U.S. patent application.
- On July 25, 1958, Hilmer filed a corresponding U.S. patent application.
Procedural Posture:
- Hilmer and Habicht were parties to an interference proceeding (No. 90,218) in the U.S. Patent Office to determine who invented the subject matter of a specific patent claim first.
- Hilmer conceded priority of the invention of the interference count to Habicht.
- Subsequently, a patent examiner rejected Hilmer's claims 10 and 16 under 35 U.S.C. § 103 as obvious over the invention defined in the interference count (now Habicht's patent claim) in view of another patent to Wagner.
- Hilmer appealed the rejection to the Patent Office Board of Appeals, which affirmed the examiner's decision.
- Hilmer appealed to the Court of Customs and Patent Appeals (in a prior case, Hilmer I), which remanded the case for the Board to clarify its position on the rejection of claims 10 and 16.
- On remand, the Board of Appeals again affirmed the rejection, holding that Habicht's invention was prior art as of his Swiss filing date by combining 35 U.S.C. § 102(g) and § 119.
- Hilmer again appealed the Board's decision to the 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 allow a U.S. patent's foreign 'convention' filing date to be used as the date of invention 'in this country' under 35 U.S.C. § 102(g) to make the subject matter of that patent's claim 'prior art' for a § 103 obviousness rejection?
Opinions:
Majority - Rich, Acting Chief Judge
No, a U.S. patent's foreign filing date cannot be used to establish a prior art date under § 102(g). The court holds that § 119 does not remove the explicit territorial limitation in § 102(g) that an invention must be made 'in this country' to qualify as prior art under that section. The court reasons that § 119 provides a positive right to an applicant—a shield to protect them against intervening patent-defeating events—not a means to create prior art against others—a sword. The court extends its reasoning from Hilmer I, where it rejected a similar attempt to combine § 119 and § 102(e). The legislative history of § 102(g) confirms Congress deliberately inserted the 'in this country' language, and the concept of 'priority' was not intended to modify the statutory definition of 'prior art' under § 103.
Analysis:
This decision, along with its predecessor Hilmer I, firmly establishes that a foreign priority date under § 119 is for priority purposes only and does not create a prior art date against other inventors under either § 102(e) or § 102(g). It reinforces the territorial nature of U.S. patent law, meaning inventive activity outside the U.S. is generally not citable as prior art to defeat another's patent application. This prevents a U.S. patent from having a 'secret' prior art effect dating back to a foreign filing date, which would be unknown to and undiscoverable by other U.S. inventors, thus providing greater certainty in the patent system.
