## Facts

- Faizulla G. Kathawala filed a U.S. application directed to indole analogs of mevalonolactone, pharmaceutical compositions containing them, and methods of use for inhibiting cholesterol biosynthesis and treating atherosclerosis.
- He first filed a related U.S. application on November 22, 1982, but later added ester-derivative subject matter not supported in that earlier disclosure.
- On November 21, 1983, he filed counterpart applications in Greece and Spain with substantially the same disclosure as the later U.S. application, including ester derivatives.
- The Greek patent issued October 2, 1984 and included claims to compounds, compositions, methods of use, and processes for making the compounds.
- The Spanish patent issued January 21, 1985 and included process-of-making claims.
- On April 11, 1985, more than one year after the foreign filings, Kathawala filed the U.S. continuation-in-part application at issue, including claims directed to the ester derivatives.
- The examiner rejected claims 1, 2, and 19–21 under pre-AIA 35 U.S.C. § 102(d) based on the Greek and Spanish patents; the Board affirmed.

## Issues

1. Whether pre-AIA 35 U.S.C. § 102(d) barred the U.S. claims because the invention was patented in Greece and Spain on applications filed more than twelve months before the U.S. filing and the foreign patents issued before the U.S. filing.
2. Whether the Greek patent “patented” the same invention despite arguments that Greek law limited claimable subject matter.
3. Whether the Spanish patent’s “patented” date was the issue date or a later publication date for § 102(d) purposes.
4. Whether a Spanish process-only patent could be treated as a patent on the “same invention” as U.S. claims to compounds, compositions, and methods of use.
5. Whether the challenged subject matter could rely on the earlier 1982 U.S. filing date rather than the continuation-in-part filing date.

## Decision

- The Federal Circuit affirmed the Board’s decision sustaining the § 102(d) rejection.
- The court held the § 102(d) timing requirements were met: the foreign applications were filed more than one year before the U.S. continuation-in-part, and both foreign patents issued before the U.S. filing.
- The court treated the Greek patent as a foreign patent on the same invention, rejecting arguments that asserted limitations of Greek law negated the granted rights.
- The court treated the Spanish patent as “patented” on its grant/issue date, not a later publication date.
- The court concluded the Spanish process claims did not avoid § 102(d) where the foreign and U.S. disclosures covered the same subject matter and conferred patent rights relating to that invention.
- The court treated the ester-derivative subject matter as having an effective U.S. filing date of April 11, 1985 because it was not supported in the 1982 application.

## Legal Principles

- Pre-AIA 35 U.S.C. § 102(d) bars a U.S. patent when (i) the applicant’s invention is patented in a foreign country, (ii) the foreign application was filed more than twelve months before the relevant U.S. filing, and (iii) the foreign patent issued before the U.S. filing.
- “Same invention” under § 102(d) is assessed substantively, focusing on the subject matter and rights conferred, not merely differences in claim form or national claiming practice.
- A foreign patent may trigger § 102(d) even if its claims are drafted in a different statutory category (e.g., process claims abroad versus product or use claims in the United States) when the underlying disclosed invention is the same.
- For a continuation-in-part, new matter cannot obtain the benefit of an earlier U.S. filing date; § 102(d) is applied using the U.S. filing date applicable to the added subject matter.
- For § 102(d), the relevant “patented” date is the foreign grant/issue date rather than a later publication date where the patent rights have been granted.

## Conclusion

The Federal Circuit held that Kathawala’s continuation-in-part claims were barred by pre-AIA § 102(d) because his invention, including ester-derivative subject matter with a later U.S. effective filing date, had already been patented in Greece and Spain on applications filed more than one year earlier, and the foreign patents issued before the U.S. filing.


In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993)