Section 102(e) cannot serve to preclude the grant of a patent on an application for which an applicant has established through a valid claim for priority to a foreign filed application an effective filing date that is prior to the filing date of an issued United States patent. On this basis alone, section 102(e) is consistent with Article 4B of the Paris Convention, as any party who has made an effective priority claim will not lose rights due to the filing during the priority year by another of an application in the United States that results in a patent.
The second issue raised in the question is the prior art date of a United States patent in which a claim has been made for priority to a foreign-filed application. The effective filing date for purposes of section 102(e) of such an application is the actual filing date of the United States application, not the priority date claimed in such an application. The definition of the effective date as a prior art reference under the so-called "Hilmer" rule is not inconsistent with the obligations of Article 4B of the Paris Convention, as it will not affect the ability of an applicant to obtain a patent where the applicant has made a priority claim that establishes an effective filing date prior to the effective prior art date of the patent.
The final issue raised by this question is whether the exclusive rights guaranteed to patent owners through Article 28 of the TRIPS Agreement are prejudiced because of the effect of the Hilmer rule. The basis for this question appears to be the assumption that an applicant who has obtained a patent in which a valid priority claim has been made will not be able to preclude the issuance of a second patent on the same invention, or an obvious variant thereof, through operation of section 102(e)/103 to a party who has filed an application after the first patentee’s priority date but before his US filing date. As a result, it is assumed that patents will be granted that are obvious in view of each other.
This assumption is incorrect, as section 102(e)/103 is not the only legal grounds governing the two applications in the situation described above. Section 102(g) also will serve to ensure that only one patent will issue on one invention. Operation of section 102(g) in a situation where section 102(e), standing alone, would not preclude the issuance of two patents is illustrated in the figure below.
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The changes implemented by the Uruguay Round Agreements Act of 1994 permit nationals from any WTO Member to prove a date of invention relying on evidence concerning the invention from outside the United States. In view of these points, the answer to the question of whether United States patent law due to the situation described above "unreasonably prejudices the exclusive right conferred under TRIPS Article 28" is clearly no.
