In re Hilmer (Hilmer II)
Court of Customs and Patent Appeals
424 F.2d 1108 (1970)
Hilmer (plaintiff) filed a patent application that was rejected by the patent examiner as obvious. The rejection was based on two patent references, one having been filed in the United States prior to Hilmer’s application, but the other (the Habicht patent) having been filed in the United States after Hilmer’s filing date. The Habicht patent, however, relied upon a foreign-filed patent application (the Switzerland application) for priority. The Switzerland application’s filing date pre-dated Hilmer’s United States application filing date. Hilmer appealed the examiner’s decision to the Patent Office Board of Appeals (Board), which upheld the rejection, holding that a U.S. patent is prior art as of its foreign filing date. In In re Hilmer (Hilmer I), 359 F.2d 859 (C.C.P.A. 1966), the United States Court of Customs and Patent Appeals reversed the Board’s decision. The court held that the Habicht patent constituted prior art under 35 U.S.C. § 102(e) only as of Habicht’s filing date in the United States, and that Hilmer could overcome this prior art date because he had filed a patent application in Germany before Habicht filed in the United States. On remand, the Board considered the question of whether the compound claimed in claim 1 of the Habicht patent was prior art that would support rejecting the Hilmer application as obvious. Relying primarily on 35 U.S.C. § 102(g), the Board concluded that the claim 1 compound was patent-defeating prior art against Hilmer as of the date of Habicht’s Switzerland application. Hilmer appealed.
Rule of Law
Holding and Reasoning (Rich. C.J.)
What to do next…
Unlock this case brief with a free (no-commitment) trial membership of Quimbee.
You’ll be in good company: Quimbee is one of the most widely used and trusted sites for law students, serving more than 97,000 law students since 2011. Some law schools—such as Yale, Vanderbilt, Berkeley, and the University of Illinois—even subscribe directly to Quimbee for all their law students. Read our student testimonials.
Learn more about Quimbee’s unique (and proven) approach to achieving great grades at law school.
Quimbee is a company hell-bent on one thing: helping you get an “A” in every course you take in law school, so you can graduate at the top of your class and get a high-paying law job. We’re not just a study aid for law students; we’re the study aid for law students. Read more about Quimbee.
Here's why 175,000 law students have relied on our case briefs:
- Written by law professors and practitioners, not other law students. 14,000 briefs, keyed to 188 casebooks. Top-notch customer support.
- The right amount of information, includes the facts, issues, rule of law, holding and reasoning, and any concurrences and dissents.
- Access in your classes, works on your mobile and tablet. Massive library of related video lessons and high quality multiple-choice questions.
- Easy to use, uniform format for every case brief. Written in plain English, not in legalese. Our briefs summarize and simplify; they don’t just repeat the court’s language.