PCT application : CAFC Alert

Inventor’s Own Provisional Application Can Be Prior Art Against Inventor’s Own US National Stage Application

| June 10, 2022

Konda v. Flex Logix Technologies, Inc.

Decided: May 6, 2022

per curiam: Taranto, Clevenger, Chen (May 6, 2020).


            In Flex Logic’s inter partes reviews (IPRs), the PTAB agreed with Flex Logic in that the ‘605 PCT and the ‘394 Provisional application did not support the challenged claims of the ‘523 patent, and therefore, the ‘523 patent could not benefit from the earlier filing dates of the ‘605 PCT and the ‘394 Provisional application and that the ‘523 patent benefited only from its filing date of November 22, 2009.  The PTAB agreed that a prior art ‘756 PCT publication (another one of Konda’s earlier patent applications published on September 12, 2008) and the ‘394 provisional application (that was incorporated by reference into the ‘756 PCT) rendered all the challenged claims unpatentable.  The only issue on appeal was whether the ‘394 Provisional is publicly available to qualify as prior art.  The Federal Circuit held that Konda’s US ‘394 Provisional application that is incorporated by reference in a publicly available publication of a PCT application is “publicly available” as prior art under pre-AIA 35 USC §102(b).


            Konda’s US Patent No. 8,269,523 issued from US patent application s/n 12/601,275 (the ‘275 application) filed November 22, 2009.  The ‘275 application is the national phase entry of PCT application no. PCT/US2008/064605 (the ‘605 PCT) filed May 22, 2008.  The ‘275 application also claimed priority back to Provisional application no. 60/940,394 (the ‘394 Provisional) filed May 25, 2007.  Flex Logic’s IPRs relied upon WO 2008/109756 (the ‘756 PCT) and the ‘394 Provisional as prior art against the challenged claims of the ‘523 patent.  The ‘756 PCT is another one of Konda’s earlier patent applications that incorporated by reference the ‘394 Provisional.  The ‘756 PCT was published on September 12, 2008. 

Procedural History

Two inter partes reviews (IPRs) were filed by Flex Logic, addressing different sets of claims in Konda’s US Patent No. 8,269,523 (the ‘523 patent).  The PTAB’s Final Decision in the consolidated IPRs found that the ‘605 PCT and the ‘394 Provisional applications did not have support for the claims of the ‘523 patent as required by 35 USC §112.  Accordingly, the ‘523 patent only benefited from its filing date of November 22, 2009.  The PTAB also found that all the challenged claims to be unpatentable as being anticipated or obvious over the ‘756 PCT published on September 12, 2008 and the ‘394 provisional application that was incorporated by reference into the ‘756 PCT.  The only issue on appeal to the Federal Circuit was whether the ‘394 Provisional was publicly available to qualify as prior art under pre-AIA 35 USC §102(b).

Relevant Statute and Rules

35 U.S.C. 122(a):  

(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director

37 CFR 1.14(a)(1)(vi):

(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.

37 CFR 1.14(c):

(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if a power of attorney has not been appointed under § 1.32.


There is no dispute that the ‘756 PCT is an international patent application that incorporated by reference the ‘394 Provisional application, thereby meeting the requirements of 37 CFR 1.14(a)(1)(vi) for public accessibility to the ‘394 Provisional application.

Konda relied on the last sentence of 37 CFR 1.14(a)(1)(vi) whereby “The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.”  And, Konda did not provide any written authority pursuant to 37 CFR 1.14(c) to provide access the ‘394 Provisional application.  Konda also relied on MPEP 103(VII) (8th ed., rev. July 7, 2008) stating that access to provisional applications “will only be given to parties with written authority from a named inventor, the assignee of record, or the attorney or agent of record.” 

However, the Federal Circuit noted the last sentence of 37 CFR 1.14(a)(1)(vi) pertains only to access to the “paper file” of the pending application, which the Federal Circuit interprets to mean the “whole file history,” which the regulation clearly distinguishes from the “application as originally filed.”  It is the “application as originally filed” to which 37 CFR 1.14(a)(1)(vi) grants public accessibility when that “application as originally filed” was incorporated by reference in a PCT application.  The last sentence of 37 CFR 1.14(a)(1)(vi) and 37 CFR 1.14(c) do not apply to the “application as originally filed.”  There was no need for Konda’s written authorization to access that “application as originally filed.” 

As for the MPEP, the court noted that the MPEP “does not have the force of law.”  The court also noted that MPEP 103 further stated that provisional applications were “also available in the same manner as any other application” “thereby permitting the access authorized under 37 CFR 1.14(a)(1)(vi).”


  1. If, following the inventor’s incorporation by reference preferences, the ‘605 PCT in the subject ‘523 patent family incorporated by reference the ‘756 PCT, perhaps 112 support could have been argued for the ‘523 claims.  Nevertheless, as can be appreciated from the result of this case (an inventor’s own provisional application was used as prior art against his own national stage application!), applicants must be careful when incorporating by reference applications from a different patent application family.      
  2. In the PTAB’s Final Decision, the entire 112 support discussion is premised on case law regarding entitlement to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier filed application provides support for the claims of the later application. And, somehow, the national stage application of an international PCT application is only accorded the benefit of its “filing date” of the national stage ‘275 application.  However, the international ‘605 PCT application is not “an earlier filed application” from the national stage application thereof.  As noted in MPEP 1893.03(b):

An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application.

Pursuant to 35 USC 363:

An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.

Similarly, PCT Article 11(3) provides that…

an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.

Here, the ‘275 national stage application appears to be identical to the ‘605 PCT application.  Nevertheless, this issue was never challenged before the PTAB nor the Federal Circuit. 


| April 20, 2018

Hologic, Inc. v. Smith & Nephew, Inc. and Covidien LP

March 14, 2018

Before Newman, Wallach, and Stoll.  Opinion by Stoll.


Hologic, Inc. initiated an inter partes reexamination of U.S. Patent No. 8,061,359 (’359 patent.  The ’359 patent claims priority to an earlier-filed PCT application with a nearly identical specification.  The PTAB found that S&N’s PCT application has sufficient written description so that it is a proper priority document and is not an invalidating obviousness reference.  The CAFC held that since substantial evidence supports the PTAB’s finding that the PCT application provides sufficient written description disclosure of the claimed feature, the ’359 patent is entitled to claim priority to the PCT application.



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