PCT Applications as Prior Art

Patent

By Dennis Crouch

International Patent Applications filed under the Patent Cooperation Treaty (PCT) are ordinarily published by the World Intellectual Property Organization (WIPO) 18-months after the filing date.

In a prior comment section, some debate arose as to the effective prior-art date that would be assigned to those applications. The answer is simple – once the application is published, the application will count as prior art as of its priority filing date so long as the PCT applications designates the United States (under the current system, all contracting states are automatically designated). Here is how I get there:

  1. Under 35 U.S.C. § 102(a)(2) patent applications are counted as prior art as of their effective filing date so long as the application is published under §122(b).
  2. At first glance, the limitation of being “published under section 122(b)” seems to limit the doctrine to US published applications. However, 35 U.S.C. § 374 changes the rules by indicating that WIPO’s publication of international PCT applications “shall be deemed a publication under section 122(b).”
  3. Section 102(d) then stretches the prior art date back to the earliest priority filing date that can claim priority to the relevant disclosure.

The result is that published PCT applications that designate the US count as prior art as of their priority filing date. In this analysis, there is no restriction on application language or country of origin.

Phase-in: The phase in of this rule is fairly simple. The above calculations apply when considering prior art against an application filed on or after March 16, 2013 and that, at any point in its history, included a claim to a claimed invention that has an effective filing date of on or after March 16, 2013.