Prior Art

  • TIPS:

a) third-party on sale/public use

  • FITF: Changes this subject for patents subject to it.
  • Factors For Evaluating Sufficiency Of Evidence Of Third-Party Prior Public Use, On Sale, Invention: “Those factors include: (1) delay between event and trial, (2) interest of witness, (3) contradiction or impeachment, (4) corroboration, (5) witnesses’ familiarity with details of alleged prior structure, (6) improbability of prior use considering state of the art, (7) impact of the invention on the industry, and (8) relationship between witness and alleged prior user.” Juicy Whip (Fed. Cir. 06/07/02); Art+Com (Fed. Cir. 10/20/17) (non-precedential) (aff’g public use jury verdict, testimony corroborated by video and documents); Transweb (Fed. Cir. 02/10/16) (aff’g jury verdict of public use invalidity: accused infringer’s testimony that he handed out samples of particular type of product at an industry expo. pre critical date, sufficiently corroborated even if not every element of that testimony was corroborated); Ohio Willow Wood (Fed. Cir. 11/15/13) (explaining “rule of reason” factors for corroborating prior art); see Ceats (Fed. Cir. 04/26/13) (non-precedential) (testimony corroborated by contemporaneous documents and video; aff’g jury verdict of anticipation). “Corroboration is generally a question left to the jury.” Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (vacating exclusion of prior art evidence).
  • Method Claim: Third-Party Sale Of Device Merely Capable Of Performing Method Does Not Put Method On Sale: Third-party sale of device that was capable of performing claimed method, but was not designed to do so, is not “on sale” bar to the method claim. Poly-Am. (Fed. Cir. 09/14/04).
  • Patent Owner’s Evidence Against Prior Use Needs No Corroboration: Evidence offered by patent owner that product on sale before critical date lacked elements of the claim, need not be corroborated. i4i (Fed. Cir. 03/10/10), affirmed on other grounds (U.S. 06/09/2011).
  • TIPS:

b) “printed publication” (sec. 102(a), (b))

  • BASICS: “Public accessibility is the ‘touchstone in determining whether a reference constitutes a ‘printed publication.’” B/E Aerospace (Fed. Cir. 10/03/17) (non-precedential) (insufficient evidence that exact version of reference in evidence had been publicly accessible before critical date). Reference must be sufficiently accessible to those skilled and interested in the art so that exercising reasonable diligence they would have been able to learn of its existence and potential relevance and access it. Suffolk Tech. (Fed. Cir. 05/27/14) (aff’g Summ. J. of anticipation over a UseNet posting); In re Lister (Fed. Cir. 09/22/09); In re Enhanced Security (Fed. Cir. 01/13/14) (2-1) (manual for product with dozen customers and available on request was sufficiently accessible). “A printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Suffolk Tech. (Fed. Cir. 05/27/14) (UseNet posting was a printed publication even though not indexed or searchable, where posted within an organized hierarchy of newsgroups, “dialogue with the intended audience was the entire purpose of the newsgroup postings,” and it elicited six responses). Whether qualifies as a printed publication is a legal conclusion based on factual determinations. Blue Calypso (Fed. Cir. 03/01/16).
  • Public Accessibility: Online or Computer Database Access: In re Lister (Fed. Cir. 09/22/09) (a manuscript in the Copyright Office (in 1994) whose title was searchable via key words in a Westlaw database of Copyright Office records was publicly accessible as of the date it was entered in that database, even though one had to travel to the Copyright Office to inspect the manuscript and could not copy it.); SRI (Fed. Cir. 01/08/08) (addressing case law on public accessibility in context of paper e-mailed for peer review and placed on FTP server).
  • Paper On Web May Or May Not Qualify As “Publication”: Compare Blue Calypso (Fed. Cir. 03/01/16) (aff’g PTAB decision that paper available via hyperlink on graduate student’s web page on University web site was not publicly accessible; “no evidence that the ordinarily skilled artisan would know of Dr. Ratsimor’s personal webpage or its web address,” or that search engine search would have led to this paper, and related published article did not cite to this paper.) with Voter Verified (Fed. Cir. 11/05/12) (article searchable on well-known web site was publication even if not indexed by search engine) and Jazz Pharma. (Fed. Cir. 07/13/18) (aff’g PTAB that meeting materials posted on FDA web site for at least two months before critical date, which web site was listed in meeting notice in Federal Register as where materials would be posted, that notice described subject of the meeting, meeting was open to public and there was no expectation of confidentiality, and skilled artisans in this field used to looking at Federal Register, qualified as “printed publication” even though not searchable.).
  • Foreign File History May Be “Publication”: Foreign file history, with drawings cancelled from the application before it issued as a patent, qualified as a publication even though no evidence that it was copied by anyone. Bruckelmyer (Fed. Cir. 04/20/06) (as disclosure was enabling, “the only question that remains for us to answer is whether a person of ordinary skill in the art interested in the subject matter of the patents in suit and exercising reasonable diligence would have been able to locate” the application.) See In re Wyer (C.C.P.A 07/30/81) (laid-open Australian patent application “classified, indexed, [and] abstracted” qualified as printed publication, where microfilm copy was available in seven Australian Patent offices for public viewing, despite no evidence that it was disseminated).
  • A Document May Be Published By Display Even If Not Distributed: A slide presentation displayed at an industry meeting and at a University, for total of three days, without any confidentiality notice was a printed publication even though no copies were distributed or indexed. In re Klopfenstein (Fed. Cir. 08/18/04).
  • A Non-Enabling Publication May Be Enabled By A Foreign Sale? In a plant patent case, Fed. Cir. ruled: “Evidence of the foreign sale of a claimed reproducible plant variety may enable an otherwise non-enabled printed publication disclosing that plant, thereby creating a § 102(b) bar.” In re Elsner (Fed. Cir. 08/16/04) (but, added dictum that ruling would be different in a utility patent case.)
  • Public Accessibility: Foreign File History: Bruckelmyer (Fed. Cir. 04/20/06) (drawings in an application in a foreign file history was a “publicly accessible” printed publications).
  • Public Accessibility: Disseminated Copies: “Common considerations about materials that are distributed at meetings or conferences: … the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations. Another factor is whether there is an expectation of confidentiality between the distributor and the recipients of the materials. Even if there is no formal, legal obligation of confidentiality, it still may be relevant to determine whether any policies or practices associated with a particular group meeting would give rise to an expectation that disclosures would remain confidential.” Medtronic (Fed. Cir. 06/11/18) (remanding PTAB finding video and slides not prior art; video distributed on CD at three meetings and slide printouts distributed at two meetings, each attended by between 20 and 55 surgeons and experts, one closed to members of particular group but others not, may be publications, depending on accessibility, including expectations of confidentiality; and also on expertise of recipients and thus ability to retain what they learned); Nobel Biocare (Fed. Cir. 09/13/18) (aff’g PTAB finding catalog was public accessible at a trade show, corroborated by testimony of three witnesses and date on the catalog); Typeright (Fed. Cir. 07/06/04) (A document handed out to a few people without restriction, e.g., at a trade show, can be a “publication.”); Cordis (Fed. Cir. 03/31/09) (not prior art where patent applicant gave monograph to two companies as part of commercialization effort but with reasonable expectation that it would be kept confidential, even though one agreement disclaimed legal obligation to keep confidential); Kyocera (Fed. Cir. 10/14/08) (standard Spec. sufficiently disseminated and available to public to qualify as publication); Mass. Inst. Tech. (Fed. Cir. 10/07/85) (paper orally presented to conference attended by 50 to 500 cell culturists, copy given head of the conference in advance, and copies distributed on request, without any restrictions, to as many six persons—qualified as printed publication). The expertise of the target audience for a meeting where the document was disseminated is a factor but not dispositive. GoPro (Fed. Cir. 07/27/18) (rev’g PTAB decision that catalog made available at a trade show for dealers was not a printed publication, where hundreds of copies were distributed without restriction). See C.R. Bard (Fed. Cir. 09/28/18) (non-precedential) (remanding to PTAB for more fact finding on actual distribution of reference manual versus availability if requested).
  • Public Accessibility: Library Access: reference cataloged in Norwegian library under “computer networks” and “communication protocols” was publicly accessible where challenged patent was entitled “Mobile Data Network Description” and problem patent purported to solve was the transmission of data to mobile computers, even though the claims were limited to “e-mail.” In re NTP (Seven Appeals) (Fed. Cir. 08/01/11). See In re Hall (Fed. Cir. 01/16/86) (a single cataloged thesis in one university library qualified as printed publication).

c) sec. 102(e) prior art

  • BASICS: Sec. 102(e) (pre-AIA/FITF): “the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.” In determining whether reference was “by another,” the question is “‘whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Emerachem (Fed. Cir. 06/15/17) (although corroboration not always required, here, uncorroborated, conclusory declaration (by an inventor of subject application and overlapping-inventors prior art application) that cited portion was commonly invented, insufficient to refute prior invention “by another.”).
  • FITF: Changes this subject for patents subject to it.
  • Which Pre-AIA Version Of Sec. 102(e) Applies?: See PTO Examination Guidelines re which version of Sec. 102(e) applies (pre Nov. 29, 2000 or not).
  • Under Secs. 102(e)(1) and (2), Disclosure In Reference Patent/Publication’s Application As Filed On Asserted Filing Date Is What Matters And If It Is An Ancestor Application, It Must Support Reference Patent/Publication’s Own Claims Also: Effective filing date in the U.S. is the operative prior-art date of the reference regardless of any foreign priority date under Sec. 119. In re Hilmer (CCPA 04/28/66). Alleged Sec. 102(e) reference effective as prior art as of its ancestor’s filing date only if that ancestor supports the claims of that alleged reference. In re Wertheim (CCPA 04/09/81) (“determinative question here is whether the invention claimed in the Pfluger patent finds a supporting disclosure in compliance with § 112, as required by § 120, in the 1961 Pfluger I application so as to entitle that invention in the Pfluger patent, as ‘prior art,’ to the filing date of Pfluger I. Without such support, the invention, and its accompanying disclosure, cannot be regarded as prior art as of that filing date.) “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware (Fed. Cir. 09/04/15) (IPR petitioner compared reference’s provisional’s disclosure to challenged patent’s claims but failed to compare it to reference’s own claims so failed its burden of production to show reference entitled to provisional’s filing date). Same rule applies to published applications. Amgen (Sanofi) (Fed. Cir. 10/05/17) (aff’g JMOL of non-obviousness, for failure of challenger to show published PCT claims supported by its provisional). When a patent qualifies as prior art under Sec. 102(e), it’s only prior art for what was originally disclosed in its original application as filed, which may be a provisional app., In re Giacomini (Fed. Cir. 07/07/10), Apple (Fed. Cir. 08/07/13) (pat. reference’s provisional app. had sufficient disclosure for issued pat.), Dynamic Drinkware (Fed. Cir. 09/04/15) (aff’g IPR petitioner failed to satisfy its burden of production to establish reference entitled to its provisional filing date).
  • Sec. 102(e) Art Is Prior Art For Sec. 103 Also: Is prior art for Sec. 103 purposes too. Hazeltine (U.S. 12/08/1965). Whether reference qualifies as prior art under Sec. 103 is question of law reviewed de novo. Emerachem (Fed. Cir. 06/15/17) (aff’g PTAB determination that patent owner did not prove earlier date of invention).
    • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” at § 103(c). [Note: Sec. 102(e) exclusion applies only if challenged patent filed on or after Nov. 29, 1999]. But, pre-AIA, post-invention assignment cannot satisfy common ownership requirement. Indus. Tech. (Fed. Cir. 01/29/16) (non-precedential).
    • FITF: See Patently O article (12/13/17) suggesting FITF Sec. 102(a)(2) “secret” prior art might not qualify as Sec. 103 (FITF) art because not known to person of ordinary skill in the art before the effective filing date.
    • FITF: See Patently O article (12/11/17) suggesting In re Wertheim rule may not apply under FITF Sec. 102(d).

d) applicants’ “publications”/disclosures

  • FITF: Changes this subject for patents subject to it.
  • “Estoppel” On Reference Enabling: More difficult to argue that applicant’s own allegedly prior art reference is not enabling when it’s a version of the applicants’ disclosure in the patent application. See SRI (Fed. Cir. 01/08/08) (aff’g Summ. J. that claims anticipated by patent owner’s published paper early in project that led to patent applications, where paper had similar and partial identical disclosures: “these disclosures helped the inventors obtain issuance” of the patent. Thus, “the record meets the lower enablement standard for prior art under 35 U.S.C. § 102(b).” No mention of “estoppel.”).
  • TIPS:

e) patent owner’s other patents

  • TIPS:

f) prior invention (sec. 102(g)) [by one of the co-inventors]

  • BASICS: Under limited circumstances, one co-inventor’s prior work (“invention”) can invalidate a claim to a joint invention. “A person shall be entitled to a patent unless—… before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it….” 35 U.S.C. § 102(g)(2) (pre-AIA).
    • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” at § 103(c). But, pre-AIA, post-invention assignment cannot satisfy common ownership requirement. Indus. Tech. (Fed. Cir. 01/29/16) (non-precedential).
    • Joint Research Can Be Treated As Co-Ownership: “For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if–(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.” Id.  103(c).
    • FITF: Changes this subject for patents governed by it.
    • Applicable to Non-FITF Patents And Some FITF Patents: Applies to non-FITF patents and also applies to FITF patents if they also have or had a claim with, or reference an application which had, an effective filing date before March 15, 2013. See L. 112–29, § 3(n), Sept. 16, 2011, 125 Stat. 293.

g) prior invention (sec. 102(g)) [by third party]

  • BASICS: Must show that a prior inventor either was first to reduce invention to practice or conceived of the invention first and was diligent in reducing it to practice, all in the U.S., and challenger must rebut any showing that prior inventor had abandoned, suppressed, or concealed the invention. Fox Grp. (Fed. Cir. 11/28/12) (aff’g Summ. J. of invalidity under Sec. 102(g); prior inventor need not prove conception if it proves prior reduction to practice) (note: opinion contains some errors describing the law). Corroborating evidence of alleged prior invention “is a flexible, rule-of-reason demand for independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed.”) Fleming (Fed. Cir. 12/24/14) (aff’g jury verdict of invalidity; finding no abandonment despite 3 year 2 month delay from actual reduction to practice to filing of the application). Lack of abandonment may be shown by showing that an embodiment of the invention was marketed or sold, or that the invention was described in a publicly disseminated document. Fox Grp. (Fed. Cir. 11/28/12). Abandonment, suppression, and concealment can be inferred from unreasonable delay in making the invention publicly known. Activities abroad can avoid abandonment, suppression, concealment. Sec. 102(g) prior art qualifies as Sec. 103 prior art also, as of its date of conception. Tyco Healthcare (Fed. Cir. 12/04/14); Dow Chemical (Fed. Cir. 09/28/01) (aff’g finding that prior invention had not been suppressed post reduction to practice; “the failure to file a patent application, to describe the invention in a published document, or to use the invention publicly, within a reasonable time after first making the invention may constitute abandonment, suppression, or concealment.”). See generally Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998); Sandt Tech. Ltd. v. Resco Met. & Plas. Corp., 264 F.3d 1344 (Fed. Cir. 2001).
    • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: See above section.
    • FITF: Changes everything on this subject for patents subject to it.
  • Even “Secret” Sec. 102(g) Prior Art Is Prior Art For Sec. 103 (When Sec. 103(c) Exception Does Not Apply): Even if not known to inventor or the art, and even if not reduced to practice before inventor’s conception, Sec. 102(g) prior art is prior art for purpose of Sec. 103, as of its invention date. Tyco Healthcare (Fed. Cir. 12/04/14) (rev’g trial court).
  • Prior Copying/Use In U.S. Insufficient To Establish Prior Invention Under Sec. 102(g)(2): Sec. 102(g)(2) requires that an “inventor” make the invention in U.S., so is not satisfied by someone reproducing in the U.S. an idea she obtained from another who conceived it abroad. Solvay I (Fed. Cir. 10/13/10) (Honeywell engineers not inventors because derived invention from Russian engineers). But, statute is satisfied by foreign-conceived invention that is reduced to practice in U.S. by or on behalf of the inventor. Solvay II (Fed. Cir. 02/12/14) (2-1) (Russian engineers were inventors because Honeywell engineers worked on their behalf).
  • Constructive Reduction To Practice Perhaps Requires Enabling Disclosure And Written Description Of Only Single Embodiment Within The Claim: At least in interference context, to show constructive reduction to practice in an application a party “need only show that the earlier-filed application discloses a single embodiment within the scope of the interference count that complies with” Sec. 112(1/a), i.e., an anticipation standard, not a Sec. 112 (full-scope) standard. Otonomy (Fed. Cir. 08/01/18) (non-precedential) (rev’g PTAB decision that ancestor application disclosed an embodiment of interference count).
  • TIPS:

h) derivation from others (sec. 102(f))

  • BASICS: “To prove derivation under 102(f), ‘the party asserting invalidity must prove both prior conception of the invention by another and communication of that conception to the patentee’ by clear and convincing evidence. Gambro (Fed. Cir. 04/08/97). The communication must be sufficient to enable one of ordinary skill in the art to make the patented invention. Id. at 1578, 42 USPQ2d at 1382-83.” Eaton (Fed. Cir. 03/27/03). Communicating a different idea which would render the claimed invention obvious is not sufficient. Gambro (Fed. Cir. 04/08/97). Confidential disclosures may qualify as Sec. 102(f) art to be combined with other art under Sec. 103. OddzOn (Fed. Cir. 08/08/97). Cumberland Pharm. (Fed. Cir. 01/26/17) (aff’g no derivation where FDA merely provided a general research suggestion: “ultimate question of whether a patentee derived an invention from another is one of fact, the determination of whether there was a prior conception is a question of law, which is based upon subsidiary factual findings.”)
    • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” at § 103(c). But, pre-AIA, post-invention assignment cannot satisfy common ownership requirement. Indus. Tech. (Fed. Cir. 01/29/16) (non-precedential).
    • FITF: Changes this defense for patents subject to it.
    • FITF: patent applicant’s deadline for petitioning PTO to institute a derivation proceeding against a patent/application with an earlier effective filing date, is, as interpreted by PTO, one year from earliest issuance or publication/issuance of respondent’s application/patent with claim that is same or substantially same as petitioner’s application’s claim. (28 U.S.C. § 135 (AIA))
    • FITF: patent owner’s deadline for filing civil action for derivation is one year from “date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.” 35 U.S.C. § 291 (AIA).
  •  TIP (FITF):

i) “known or used by others” in U.S. (sec. 102(a))

  • BASICS: “A person shall be entitled to a patent unless — (a) the invention was known or used by others in this country, … before the invention thereof by the applicant for patent.” Sec. 102(a). “Means knowledge or use which is accessible to the public.” Carella (Fed. Cir. 12/12/86). “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” L. Gore (Fed. Cir. 11/14/83).

j) admitted prior art

  • Admitted Art In Patent: I/P Engine (Fed. Cir. 08/15/14) (non-precedential) (2-1) (reversing $30 Million verdict; finding obviousness as matter of law based in part on patent’s admission of what was “conventional” in prior art); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”).

k) overcoming putative prior art

  • Showing Putative Prior Art Derived From Inventor: Without needing to show earlier date of invention (e.g., reduction to practice or diligence), patent applicant may overcome putative prior art (if not statutory bar) by showing applicant earlier conceived the invention and the reference derived the invention from the applicant. In re DeBaun (CCPA 08/27/82). “One’s own work is not prior art under § 102(a) even though it has been disclosed to the public in a manner or form which otherwise would fall under § 102(a).” In re Katz (CCPA 08/27/82). May overcome putative Sec. 102(a) prior art if show that the prior reference’s disclosure was the named inventor’s work and hers alone. Allergan (Fed. Cir. 06/10/14). Same applies to overcoming Sec. 102(e) prior art to extent applicant’s invention disclosed but not claimed in the putative Sec. 102(e) reference. In re Mathews (CCPA 04/10/69); http://patents.ame.nd.edu/mpep/21/2136.05.html. If applicant’s invention is claimed in the putative Sec. 102(e) references, then Sec. 102(g) priority of invention analysis governs.
  • Antedating Putative Prior Art: May overcome (antedate) Sec. 102(a), 102(e), or 102(g) prior art by showing earlier date of invention (see above), or entitlement to earlier domestic or foreign priority date under Sec. 119 or 120. See NFC Tech. (Fed. Cir. 09/20/17) (rev’g PTAB decision that patent owner had failed its burden to prove invention date earlier than Sec. 102(e) reference); Perfect Surgical (Fed. Cir. 11/15/16) (2-1) (vacating PTAB finding that applicant failed to antedate a foreign publication because applicant lacked reasonable diligence toward constructive reduction to practice); In re Mulder (Fed. Cir. 08/23/83) (patent applicant failed to antedate a reference published two days before the applicant’s patent application by presenting “no evidence” of diligence during those two days); In re Wertheim (CCPA 08/26/76). “For purposes of antedating a prior art reference, the evidence of prior invention may be sufficient if it demonstrates obviousness of the claimed invention.” Garmin (PTAB (IPR) 11/13/13) (patent owner failed to show corroborated evidence of diligence). Patent has burden of production to show invention date antedates prior art reference but patent challenger has burden of persuasion that reference qualifies as prior art. Allergan (Fed. Cir. 06/10/14) (documents did not corroborate oral testimony of conception date); Mahurkar (Fed. Cir. 03/29/96) (patent owner antedated reference).

35 U.S.C. § 102(d) (FITF): “Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.”