Wednesday, November 13, 2013

In re Hilmer (Hilmer I) case brief

In re Hilmer (Hilmer I) case brief summary
359 F.2d 859 (1966)

Appellants challenged the decision of the Patent Office Board of Appeals, which rejected their patent claims as obvious, based on a referenced patent which was considered prior art as of its foreign filing date under 35 U.S.C.S. § 119.

Appellants' claims were rejected by the patent office as obvious under 35 U.S.C.S. § 103. The patent office overturned an administrative interpretation of nearly 40 years standing by giving a United States patent effect as prior art as of the foreign filing date under 35 U.S.C.S. § 119. Appellants challenged the interpretation.


  • The court concluded that the patent office erred in reading § 119 together with 35 U.S.C.S. § 102(e) to give effect to the foreign filing date of the referenced patent in making a determination. 
  • The court held that 35 U.S.C.S. § 119 did not modify the express provision of 35 U.S.C.S. § 102(e), which provided that a referenced patent was effective as of the date the application was filed in the United States. 
  • 35 U.S.C.S. § 119 gave only a positive right to an applicant who had first filed abroad to protect against possible intervening patent-defeating events in obtaining a patent, with no impact on the effective date of a United States patent as a reference under 35 U.S.C.S. § 102(e). 
  • Thus, the patent office erred in relying on the foreign filing date for the referenced patent in rejecting appellants' patent claims.

The court reversed and remanded the case on the grounds that the patent office improperly relied on a foreign filing date for a referenced patent underlying its decision that appellants' claims should be rejected for obviousness. Because the Board failed to explain its position on the examiner's rejection of patents involving a different issue, remand was necessary so the Board could clarify its reasoning.

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