## Facts

- Mulder and Wulms filed a U.S. patent application for an integrated circuit on August 6, 1975.
- The application claimed foreign priority under 35 U.S.C. § 119 to a Netherlands application filed October 9, 1974; the PTO accorded that date.
- A draft of the U.S. application was prepared abroad and received by a U.S. affiliate in New York on July 15, 1974, before the Netherlands filing.
- The examiner rejected certain claims under 35 U.S.C. § 103 as obvious in view of Rodgers et al., an IEEE journal article published October 7, 1974, plus additional references.
- The Board of Appeals twice affirmed the § 103 rejection, and the applicants appealed to the Federal Circuit.
- Applicants did not materially dispute obviousness if Rodgers qualified as prior art; they argued Rodgers should be excluded because the July 15, 1974 completed draft should establish an earlier date.

## Issues

1. Whether an applicant may use a completed but unfiled draft patent application, received internally before a publication date, to antedate that publication and remove it as prior art.
2. Whether 35 U.S.C. § 119 permits an “effective date” earlier than the foreign filing date based on preparatory acts such as drafting and internal transmittal.

## Decision

- The Federal Circuit affirmed the Board’s decision sustaining the § 103 rejection.
- The court held the relevant effective filing date remained the Netherlands filing date (October 9, 1974) accorded under § 119.
- The unfiled draft application could not be treated as a filing date or other legally cognizable earlier date for purposes of disqualifying the Rodgers publication.
- Because Rodgers was published before October 9, 1974, it remained prior art, and the applicants’ claims were unpatentable for obviousness on the relied-upon record.

## Legal Principles

- Foreign priority under 35 U.S.C. § 119 is limited to the actual foreign filing date that meets statutory requirements.
- Preparatory steps (e.g., drafting, internal circulation, or corporate receipt of a draft application) do not create an earlier effective filing date and do not, by themselves, antedate a printed publication.
- A printed publication that predates the applicant’s earliest legally recognized filing/priority date remains prior art for purposes of evaluating obviousness under 35 U.S.C. § 103.

## Conclusion

The Federal Circuit held that § 119 provided only the Netherlands filing date as the operative priority date, and a non-filed draft application could not be used to antedate a publication; thus, the Rodgers article remained prior art and the PTO’s obviousness rejection was affirmed.


In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983)