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BPAI: 102(e) art can be effective prior art as of provisional priority date

By McKee, Voorhees & Sease, P.L.C.

In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference.  In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure in the reference was sufficiently supported in the provisional filing.

Based on language in the opinion, Examiners have the initial burden of showing the reference's entitlement to the provisional date.  The Board stated (emphasis added):

Although the Examiner's statement regarding the correspondence between the Narayanan patent and its underlying provisional application is somewhat terse and conclusory, the Examiner nonetheless found that both documents "clearly show the same subject matter"—a factual finding.  By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.

More detail of Ex parte Yamaguchi after the jump.

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Full post as published by FileWrapper on October 29, 2008 (boomark / email).