MPEP § 2138 — Pre-AIA 35 U.S.C. 102(g)

Ninth Edition, Revision 01.2024 · last revised R-01.2024

[Editor Note: This MPEP section has limited applicability to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). Patents and applications that contain (or contained at any time) at least one claim with a pre-AIA effective filing date (before March 16, 2013) and at least one claim with a post-AIA effective filing date (on or after March 16, 2013) are subject to the patentability requirements in AIA 35 U.S.C. 102-103 and subject to pre-AIA 35 U.S.C. 102(g).See MPEP § 2159 et seq.]

Pre-AIA 35 U.S.C. 102(g) bars the issuance of a patent where another made the invention in the United States before the inventor and had not abandoned, suppressed, or concealed it. This section of pre-AIA 35 U.S.C. 102 forms a basis for interference practice. See MPEP Chapter 2300 for more information on interference procedure. See below and MPEP §§ 2138.01-2138.06 for more information on the requirements of pre-AIA 35 U.S.C. 102(g).

Pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to practice and diligence, while more commonly applied to interference matters, also arise in other contexts.

Pre-AIA 35 U.S.C. 102(g) may form the basis for an ex parte rejection if: (1) the subject matter at issue has been actually reduced to practice by another before the inventor’s invention; and (2) there has been no abandonment, suppression or concealment. See, e.g., Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1205, 18 USPQ2d 1016, 1020 (Fed. Cir. 1991); New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561, 1566, 16 USPQ2d 1424, 1428 (Fed. Cir. 1990); E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434, 7 USPQ2d 1129, 1132 (Fed. Cir. 1988); Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1444-46, 223 USPQ 603, 606-08 (Fed. Cir. 1984). To qualify as prior art under pre-AIA 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient. See Kimberly-Clark, 745 F.2d at 1445, 223 USPQ at 607. While the filing of an application for patent is a constructive reduction to practice, the filing of an application does not in itself provide the evidence necessary to show an actual reduction to practice of any of the subject matter disclosed in the application as is necessary to provide the basis for an ex parte rejection under pre-AIA 35 U.S.C. 102(g). Thus, absent evidence showing an actual reduction to practice (which is generally not available during ex parte examination), the disclosure of a United States patent application publication or patent falls under pre-AIA 35 U.S.C. 102(e) and not under pre-AIA 35 U.S.C. 102(g). Cf.In re Zletz, 893 F.2d 319, 323, 13 USPQ2d 1320, 1323 (Fed. Cir. 1989) (the disclosure in a reference United States patent does not fall under pre-AIA 35 U.S.C. 102(g) but under pre-AIA 35 U.S.C. 102(e)).

In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(g) may also be the basis for an ex parte rejection under pre-AIA 35 U.S.C. 103. See In re Bass, 474 F.2d 1276, 1283, 177 USPQ 178, 183 (CCPA 1973) (in an unsuccessful attempt to utilize a 37 CFR 1.131 affidavit relating to a combination application, the inventors admitted that the subcombination screen of a copending application which issued as a patent was earlier conceived than the combination). Pre-AIA 35 U.S.C. 103(c), however, states that subsection (g) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(g), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made. See MPEP § 2146.

For additional examples of pre-AIA 35 U.S.C. 102(g) issues such as conception, reduction to practice and diligence outside the context of interference matters, see In re Costello, 717 F.2d 1346, 219 USPQ 389 (Fed. Cir. 1983) (discussing the concepts of conception and constructive reduction to practice in the context of a declaration under 37 CFR 1.131), and Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973) (holding constructive reduction to practice for foreign priority under 35 U.S.C. 119 requires meeting the requirements of 35 U.S.C. 101 and 35 U.S.C. 112).