More on the Submarine Patent Under 35 USC 102(e)
Does a provisional application apply?
You may recall our discussion of a submarine patent or submarine prior art when we were discussing novelty and particularly 35 USC 102(e).
Section 102(e) allows for submarine prior art – these are typically pending US patent applications that, when published or patented, instantly become prior art as of their filing date. The statute allows that a ". . .person shall be entitled to a patent unless . . .the invention was described in . . .a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.. . ." 35 U.S.C. § 102(e).
You can see that the letter of the law is not very explicit about whether that application for a patent might include a provisional application. So, as you might imagine, an applicant recently has a provisional cited against a application, and elected to appeal the examiners ruling.
The Ruling
In this case the examiner cited a provisional as prior art under 35 USC 102(e) against a Texas Instruments application in 2008. Texas Instruments appealed. The appeal board panel agreed with the examiner that the 102(e) prior art date does reach-back to the date of provisional filing. This result is based on their analysis of 35 U.S.C. § 111(b).
Section 111(b) requires that "provisions of this title relating to applications for patent shall apply to provisional applications for patent." In their interpretation then a provisional application can therefore be reasonably considered an "application for patent" within the meaning of 35 USC 102(e), and therefore can be a submarine patent.
The only rub is that the examiner must first rule on whether the provisional fully supports the eventual publication that triggered the 35 USC 102(e) opinion. In this case the examiner ruled that it did and the Board concurred with that opinion - so the provisional could be used as prior art.
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