In In re Giacomini, __ F.3d __ (Fed. Cir. 2010)(Rader, C.J.), the Court held that the patent-defeating date of a United States patent claiming priority based upon a provisional application disclosing the same invention is the filing date of the provisional.

Hilmer has no Application to Domestic Priority: Appellant unsuccessfully argued that because under In re Hilmer, 359 F.2d 859 (CCPA 1966)(Rich, J.), the patent-defeating date of a United States patent claiming priority under the Paris Convention is not dated back to the priority date, the same result should apply for priority based upon a provisional application.

(Hilmer is indeed an unfortunate precedent, but the answer to curing the “Hilmer problem” is legislative and not to create yet a still further misinterpretation of statutory law. The Giacomini case obviously is not an appropriate vehicle to deal with Hilmer.)

There has been considerable commentary concerning Giacomini which this writer had thought was quite properly decided, given the language of the statute and the history of the provisional application:

Unfair to Foreign Applicants: Indeed, it is unfair to give a patent-defeating date based upon a domestic priority application instead of a foreign priority application. The problem is not with the Giacomini decision, but rather the notorious Hilmer decision which has never been properly challenged in the courts.

Unfair to All Applicants: Giacomini is unfair to applicants because the patent-defeating effect retroactive to the provisional filing date creates “secret” prior art for purposes of obviousness, totally against the international patent regime where prior art for obviousness does not include “secret” prior art.

The Unfortunate Solution of S.515 “Manager’s Amendment”: The comprehensive patent reform bill now languishing in the United States Senate would overrule the Hilmer case but provide a “secret” prior art effect for obviousness as of the priority date – a broader prior art effect than exists in the international patent regimes elsewhere in the world. Such disharmony hardly creates the proper framework for international patent cooperation and “patent worksharing”.

The current test case was in fact decided in the same way by an expanded panel of the Board in Ex parte Yamaguchi, 88 USPQ2d 1606 (PTO Bd. App. & Int. 2008)(expanded panel of Fleming, Chief APJ, Hairston, Torczon, Jeffery,. Easthom, APJs)(Jeffery, APJ).