Is it possible to select a starting date for your patent term? The presentation addresses the topic of whether it is possible to select a patent term starting date, without bearing the risk that accompanies postponed filing.

1. Post-Factum, Riskless Selection of a
Patent Term Starting Date
Analysis of US Practice and Comparison to
European and Japanese Practices
Betsalel Rechav

2. Intro
Is it possible to select a starting date for your
patent term?
Generally, the patent term begins on the filing date
of the patent application. However, often this date
may be out of sync with various constraints
associated with commercializing the invention.
This presentation addresses the topic of whether it
is possible to select a patent term starting date,
without bearing the risk that accompanies
postponed filing.

3. Disclaimer
The author of this presentation and its contents is not a US patent
attorney and does not have a Law degree of any kind. Accordingly, the
contents of this presentation may include factual, analytical or logical
mistakes, misinterpretations and even speling mistakes or nardom or
typographcal errors.
All information, analyses, suggestions or insinuations in this
presentation are provided as an academic exercise and Intellectual
entertainment for voluntary viewers. No part of this contents is intended
to be a legal or any other advice, and may not be construed as such.
The author expressly disclaims any responsibility or liability for any
adverse consequences or damages resulting from considering or relying
on this presentation or portions thereof.

4. Outline
 Timing is everything
 What’s the trick?
 2nd Application Novelty Analysis
 Double Patenting Analysis
 Other Issues (Grace Period, PC 4C(4), Latches,
Practical Aspects)
 What’s in Europe?
 What’s in Japan?
 Conclusions

5. I.
Timing is Everything

6. Patent Term Duration
 A patent may be granted for an invention
claimed in a patent application, for the duration
of the patent term.
 The patent term for a (non-provisional, utility-)
patent is, nominally, 20 years in mostly all
countries in the world.
 The patent term begins on the date of filing the
(non-provisional) application for the patent.

7. When to file?
 When in the possession of an invention one
can…
 File a patent application immediately, or
 Wait; postpone the filing date and hence the
expiration date of the patent. Prior to filing, maintain
the invention confidential as a trade secret.
 Reasons for “pushing forward” the patent term:
 Timing the invention with available technology;
 Timing with company’s capacity (management,
financial, development, manufacturing);
 Timing with the market;
 Timing constraints due to laws and regulations.

8. The strategic inventor’s dilemma
 filing a patent application at the time of the
invention might prove premature and end up
loosing a portion of the patent term due to miss-
coordination with internal or external timing
constraints;
BUT
 Waiting faces a considerable risk that someone
else would invent the same invention and file
for it a patent application in the meantime –
ending up in loosing the patent completely.

9. The $$$ question
Is it possible to delay the starting
date of the patent term without
bearing the risk of loosing the
patent altogether?

10. II.
What’s the Trick

11. Enabling Patent Term Starting Date Selection
 Identify a first invention A for which Patent Term
Starting Date Selection is desired;
 Identify a second invention B, sufficiently
unrelated to A;
 File a first patent application that includes
enabling descriptions of both A and B, and which
claims B;
 After 18 months (before the first application
publishes) file a second patent application that
includes an enabling description of A, and claims
A.

12. How Does it Work (I)?
 The examination of the second application
is not affected in any way by the prior
existence of the first application (as is
further explained below). Therefore:
 If invention A, as claimed in the second
application, is not rejected, then a patent is
granted starting from the filing date of the
second application.

13. How Does it Work (II)?
 If, however, invention A is rejected due to prior
art dated to the period of 1.5 years between
the first and second applications…
 The second application is abandoned, and a
continuation application to the first application
is filed, claiming invention A.
 (Obviously, if invention A, as claimed in the second
application, is rejected due to prior art dated earlier
than the first application, then invention A is not
patentable to begin with).

14. So, what’s the bottom line?
 The applicant gets to select the patent term
starting date for invention A:
 By default, the patent term would start at the
filing date of the second application…
 …but if the applicant desires – for example, if
the later date is too late compared to some
prior art, or for any other reason – the
applicant may safely retreat to obtain a patent
for A as of the filing date of the first application.

15. III.
2nd Application
Novelty Analysis

16. The First Application isn’t Novelty Destroying
35 U.S.C. 102 Conditions for patentability; novelty.
(a) A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a
printed publication, or in public use, on sale, or
otherwise available to the public before the effective
filing date of the claimed invention;
_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
Patented?
Described in a printed publication?
In public use?
On sale?
Otherwise available to the public?
…Before the effective filing date of the claimed invention
NO

17. Or
(2) the claimed invention was described in a patent
issued under section 151, or in an application for
patent published or deemed published under section
122(b), in which the patent or application, as the
case may be, names another inventor and was
effectively filed before the effective filing date of the
claimed invention.
_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
The 1st application may not be used as
a basis for a 102/103 rejection of the
2nd application.
The First Application isn’t Novelty Destroying

18. IV.
An Excursion to
Double Patenting

19. Double Patenting Rejection
MPEP 804 Definition of Double Patenting [R-
07.2015]
 “The doctrine of double patenting seeks to prevent the
unjustified extension of patent exclusivity beyond the
term of a patent.”
 “The doctrine of nonstatutory double patenting also
seeks to prevent the possibility of multiple suits against
an accused infringer by different assignees of patents
claiming patentably indistinct variations of the same
invention.“

20. Not Applicable!
Note that Patent Term Starting Date
Selection does not cause neither
“extension of patent exclusivity beyond
the term of a patent” nor “patentably
indistinct variations of the same
invention.“

21. Statutory vs. Non Statutory
Double Patenting rejection
Statutory
(same invention)
35 U.S.C. 101 “whoever
invents or discovers any new
and useful process... may
obtain a patent therefor...”
Nonstatutory
(Obviousness type,
Not patentably distinct)
a judicially created doctrine
grounded in public policy…
intended to prevent
prolongation of the patent
term …”

22. Statutory Double Patenting
(Same Invention)
obligatory rejection form paragraph
8.31 Rejection, 35 U.S.C.
101, Double Patenting
Claim [1] is/are rejected
under 35 U.S.C. 101 as
claiming the same invention
as that of claim [2] of prior
U.S. Patent No. [3]. This is a
statutory double patenting
rejection.
¶ 8.32 Provisional Rejection,
35 U.S.C. 101, Double Patenting
Claim [1] provisionally rejected
under 35 U.S.C. 101 as claiming the
same invention as that of claim [2]
of copending Application No. [3]
(reference application). This is a
provisional statutory double
patenting rejection since the claims
directed to the same invention have
not in fact been patented.

23. Non-statutory Double Patenting
I. No Secondary Reference(s)
obligatory rejection form paragraph
¶ 8.34 Rejection,
Nonstatutory Double Patenting
Claim [1] rejected on the ground
of nonstatutory double patenting
as being unpatentable over claim
[2] of U.S. Patent No. [3].
Although the claims at issue are
not identical, they are not
patentably distinct from each other
because [4].
8.35 Provisional Rejection,
Nonstatutory Double Patenting
Claim [1] provisionally rejected on
the ground of nonstatutory double
patenting as being unpatentable
over claim [2] of copending
Application No. [3] (reference
application). Although the claims at
issue are not identical, they are not
patentably distinct from each other
because [4].
…

24. Non-statutory Double Patenting
II. With Secondary Reference(s)
obligatory rejection form paragraph
¶ 8.36 Rejection,
Nonstatutory Double Patenting
Claim [1] rejected on the ground
of nonstatutory obviousness-type
double patenting as being
unpatentable over claim [2] of
U.S. Patent No. [3] in view of [4].
[5]
8.35 Provisional Rejection,
Nonstatutory Double Patenting
Claim [1] provisionally rejected on
the ground of nonstatutory double
patenting as being unpatentable
over claim [2] of copending
Application No. [3] (reference
application). Although the claims at
issue are not identical, they are not
patentably distinct from each other
because [4].
…

25. Non-statutory Double Patenting
III. Rejection Based on Equitable Principles
In re Schneller, 397 F.2d 350, 158 USPQ 210, 216 (CCPA 1968):
“[I]n appellant’s own terms: The combination ABC was old. He made
two improvements on it, (1) adding X and (2) adding Y, the result still
being a unitary clip of enhanced utility. While his invention can be
practiced in the forms ABCX or ABCY, the greatest advantage and best
mode of practicing the invention as disclosed is obtained by using both
inventions in the combination ABCXY. His first application disclosed
ABCXY and other matters. He obtained a patent claiming [a clip
comprising] BCX and ABCX, . . . so claiming these combinations as to
cover them no matter what other feature is incorporated in them, thus
covering effectively ABCXY. He now, many years later, seeks more
claims directed to ABCY and ABCXY. Thus, protection he already had
would be extended, albeit in somewhat different form, for several years
beyond the expiration of his patent, were we to reverse.”

26. Rejections Based on Schneller
…Will Be Rare
“Nonstatutory double patenting rejections based on
Schneller will be rare. The Technology Center (TC) Director
must approve any nonstatutory double patenting rejections
based on Schneller. If an examiner determines that a
double patenting rejection based on Schneller is
appropriate in his or her application, the examiner should
first consult with his or her supervisory patent examiner
(SPE). If the SPE agrees with the examiner then approval
of the TC Director must be obtained before such a
nonstatutory double patenting rejection can be made.“

27. Non-statutory – How do We Draw the Line?
MPEP 804
B. Nonstatutory Double Patenting
“In determining whether a nonstatutory basis
exists for a double patenting rejection, the
first question to be asked is: is any
invention claimed in the application
anticipated by, or an obvious variation of, an
invention claimed in the patent? If the
answer is yes, then a nonstatutory double
patenting rejection may be appropriate.”

28. “To avoid improper reliance on the disclosure of a reference
patent or copending application as prior art in the context of
a nonstatutory double patenting analysis, the examiner
must properly construe the scope of the reference claims.
The portion of the reference disclosure that describes
subject matter that falls within the scope of a reference
claim may be relied upon to properly construe the scope of
that claim. However, subject matter disclosed in the
reference patent or application that does not fall within the
scope of a reference claim cannot be used to construe the
claim in the context of a nonstatutory double patenting
analysis as this would effectively be treating the disclosure
as prior art.“
Non-statutory – This is the Line

29. Non-statutory Double Patenting
Claim [1] provisionally rejected on the ground of nonstatutory double
patenting over claim [2] of copending Application No. [3]. This is a
provisional double patenting rejection...
The subject matter claimed in the instant application is fully disclosed
in the referenced copending application and would be covered by any
patent granted on that copending application since the referenced
copending application and the instant application are claiming common
subject matter, as follows: [4]
Furthermore, there is no apparent reason why applicant would be
prevented from presenting claims corresponding to those of the instant
application in the other copending application. See In re Schneller, 397
F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Improper Timewise Extension of Patent
Rights (With Another Application)
obligatory rejection form paragraph

30. The Paradox of Roles Swapping
 For the Examiner to reject claims in a pending application
for ‘Double Patenting’ while referencing another
application but without relying on any actual claims to the
same subject matter in the other application, the
Examiner would need to:
 argue that such claims would have been fully allowed, had them
been claimed in the other application…
 …while the applicant, in an attempt to overcome the rejection,
argues the opposite.
The 1st application, while claiming invention B, may
not be a basis for Double Patenting rejection of the
2nd application claiming invention A.

31. V.
Related Issues
• Priority Applications
• PC 4C(4)
• Grace Period
• Practical Aspects

32. Priority – US Provisional Application
USC 119 (e) (1)
An application for patent … for an invention disclosed … in
a provisional application … shall have the same effect, as
to such invention, as though filed on the date of the
provisional application…, if the application for patent… is
filed not later than 12 months after the date on which the
provisional application was filed and if it contains or is
amended to contain a specific reference to the provisional
application...
Any one of the first and second applications
may legally claim priority from a respective,
earlier-filed provisional application.

33. Priority– Foreign Application
USC 119 (a)
An application for patent… filed… by any person who
has… previously regularly filed an application for a patent
for the same invention in a foreign country… shall have the
same effect as the same application would have if filed in
this country on the date on which the application… was first
filed in such foreign country, if the application in this country
is filed within 12 months from the earliest date on which
such foreign application was filed…
A foreign application may not be used for a
priority claim for the second application.

34. Priority– PC 4C(4)
USC 119 (c)
In like manner and subject to the same conditions and
requirements, the right provided in this section may be
based upon a subsequent regularly filed application in the
same foreign country instead of the first filed foreign
application, provided that any foreign application filed prior
to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been
laid open to public inspection and without leaving any rights
outstanding, and has not served, nor thereafter shall serve,
as a basis for claiming a right of priority.

35. Grace Period
35 U.S.C. 102 Conditions for patentability; novelty.
(a) …
(b) EXCEPTIONS.
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE
THE EFFECTIVE FILING DATE OF THE CLAIMED
INVENTION.
A disclosure made 1 year or less before the effective
filing date of a claimed invention shall not be prior art to
the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint
inventor or by another…

36. Grace Period
 Obviously, the Examiner is barred from citing the first
application against the second application for 1 year
after the first application publishes, namely for 2.5 years
after the first filing.
 In principle, then, one can obtain a patent term delay of
2.5 years with the 2nd application relative to the 1st.
 However the publishing of the 1st application might
increase the likelihood of someone else filing an
application to a similar subject matter thus ruining the
novelty or inventiveness of the 2nd application.

37. Latches
 The scenario described here might be interpreted as violating the
Doctrine of Latches, namely deliberately causing an unreasonable
delay in claiming one’s rights.
 However, as is probably evident to any person involved in innovative
activity, identifying A as a (patentable) invention may not always be
straightforward, especially if one focuses on inventing or improving
B.
 Therefore, the chronological sequence of events by which one
describes in a first patent application invention B, then files a second
application for A, and then discovers that A is claimable from the first
patent application – may well be a natural one, involving no
imprudence nor misconduct of any sort.
 For example: B is a device, and A – a method which is enabled
(namely including a step which is performed) by the device.
 Failure to identify an invention as patentable does not indicate
dispossession of the invention.

38. VI.
What’s in Europe?

39. Novelty and IS in the EPC
EPC Article 54 Novelty
(1) An invention shall be considered to be new if it does not form part of the
state of the art .
(2) The state of the art shall be held to comprise everything made available to
the public by means of a written or oral description, by use, or in any other way,
before the date of filing of the European patent application .
(3) Additionally, the content of European patent applications as filed, the dates
of filing of which are prior to the date referred to in paragraph 2 and which were
published on or after that date, shall be considered as comprised in the state of
the art .
(4),(5)( Medical use and second use )…
EPC Article 56 Inventive step
An invention shall be considered as involving an inventive step if, having regard
to the state of the art, it is not obvious to a person skilled in the art. If the state
of the art also includes documents within the meaning of Article 54,
paragraph 3, these documents shall not be considered in deciding whether
there has been an inventive step .

40. PTSDS According to the EPC
The first application is always novelty-
destroying to the second application.
Patent-Term Starting Date Selection is
impossible according to the EPC

41. VII.
What’s in Japan?

42. Novelty in Japan
Patent Act Chapter 2 Article 29( 1(
An inventor of an invention that is industrially applicable may be entitled to
obtain a patent for the said invention, except for the following cases:
(i) inventions that were publicly known in Japan or a foreign country prior to
the filing of the patent application;
(ii) inventions that were publicly worked in Japan or a oreign country prior to
the filing of the patent application; or
(iii) inventions that were described in a distributed publication, or inventions
that were made publicly available through an electric telecommunication
line in Japan or a foreign country prior to the filing of the patent
application .
Prior disclosure of an invention in an un-published patent
application (either by the inventor or by another) is not
novelty destroying, and preventing double patenting is
covered by double patenting clauses in the Law

43. Secret Prior Art or “Whole Content Approach”
When The Inventors Of The Two Applications Are Not The Same…
Patent Act Chapter 3Article 29-2
Where an invention claimed in a patent application is identical with an
invention or device (excluding an invention or device made by the
inventor of the invention claimed in the said patent application)
disclosed in the description, scope of claims or drawings… which has
been filed prior to the date of filing of the said patent application and
published after the filing of the said patent application…, a patent shall
not be granted for such an invention notwithstanding Article 29(1);
provided, however, that this shall not apply where, at the time of the
filing of the said patent application, the applicant of the said patent
application and the applicant of the other application for a patent or for
registration of a utility model are the same person.

44. Double Patenting
Patent Act Chapter 4 Article 39
(1) Where two or more patent applications claiming identical inventions
have been filed on different dates, only the applicant who filed the patent
application on the earliest date shall be entitled to obtain a patent for the
invention claimed .
…
JPO English Guidelines to the Ptent Act:
2. Each item of Article 39:
2.1Article 39) 1)
2.1.1The subject of determination of Article 39
(1) Inventions of the subject of determination whether inventions are the
same or not pursuant to Article 39 are “the claimed invention .”
In Japan, apparently, an earlier application disclosing
invention A but claiming invention B, (and having a same
inventor as the later application) will not affect the
examination of the later application.

45. VIII.
Conclusions

46. Conclusions
 There seems to be no formal impediment, nor prima
facie inequitable conduct involved, in employing “Patent
Term Starting Date Selection” according to US practice.
 The sequence of filing the applications and claiming the
inventions must be reasonably rooted in the natural
overall behavior of the applicant.
 In Europe, novelty definition restricts an applicant from
claiming an invention in a later application.
 In Japan PTSD Selection seems to be possible.

47. Thank You