## Facts

- Four consolidated Patent Office appeals involved U.S. patent applications and an interference concerning chemical compounds.
- Patent Office tribunals denied the applicants the benefit of earlier British filing dates under 35 U.S.C. § 119 because the British provisional specifications allegedly did not meet disclosure requirements equivalent to 35 U.S.C. § 112, ¶ 1.
- In the Laird and Hardy matters, examiners rejected compound claims under 35 U.S.C. § 102(a) and/or § 103 based on publications predating the U.S. filing dates.
- The applicants sought to antedate the cited publications by relying on earlier British provisional specifications.
- In the Kawai interference, entitlement to priority likewise depended on whether a foreign filing could be used as an effective earlier date, turning on the sufficiency of the foreign disclosure.

## Issues

1. Whether a foreign patent application must contain a disclosure adequate to satisfy the first paragraph of 35 U.S.C. § 112 for a later-filed U.S. application to receive the foreign filing date under 35 U.S.C. § 119.

## Decision

- The court affirmed the Board of Appeals and Board of Interferences decisions in all four matters.
- It held that a foreign application can confer priority under 35 U.S.C. § 119 only if its disclosure would satisfy 35 U.S.C. § 112, ¶ 1.
- Applying that rule, the court accepted the Patent Office determinations that the relevant British provisional specifications did not meet the § 112, ¶ 1 disclosure standard, so the applicants could not rely on the British filing dates.
- Without the foreign priority dates, the cited publications remained prior art against the U.S. claims, and the rejections/priority determinations stood.

## Legal Principles

- A claim to foreign priority under 35 U.S.C. § 119 requires that the foreign application’s disclosure be sufficient under the first paragraph of 35 U.S.C. § 112 (including enablement and written description) for the subject matter for which priority is sought.
- A foreign filing that would not support the claims under § 112, ¶ 1 cannot be used to antedate prior art in examination or to establish priority in an interference.
- The adequacy of a foreign priority disclosure is assessed by the same disclosure standard applied to U.S. applications for the claimed invention.

## Conclusion

The court held that foreign priority under § 119 is available only when the foreign application contains a § 112, ¶ 1-compliant disclosure of the invention; because the British provisional specifications were insufficient, the applicants could not obtain the earlier foreign dates, and the Patent Office decisions were affirmed.


Yasuko Kawai v. Metlesics, 480 F.2d 880 (C.C.P.A. 1973)