Effective Filing Date; Right Of Priority (Secs. 100 (AIA (FITF)) 119, 120, 365)

  • BASICS: A “priority application” must “support” the claim with enablement and written description, but not with Sec. 112(2/b)’s “regards as the invention” claiming requirement. “An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.” 35 U.S.C. § 120 (pre-AIA); see also § 119. Each intermediate application needed to maintain unbroken chain of continuity must satisfy each requirement of Sec. 120 (even before Sec. 120’s 1999 amendment made this explicit). Los Angeles Biomedical (Fed. Cir. 02/28/17) (aff’g PTAB decision claim not supported by provisional: “proof of priority requires written description disclosure in the parent application, not simply information and inferences drawn from uncited references”; “the provisional application did not disclose the dosage limitation of ‘up to 1.5 mg/kg/day.’”); Encyclopaedia Britannica (Fed. Cir. 06/18/10); Medtronic (Fed. Cir. 01/22/14) (“each intermediate application must recite every intervening application before it all the way back to” the sought-after effective filing date application.) “Under § 120, parent and continuing applications’“are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law.’” Natural Alternatives (Fed. Cir. 10/01/18).
    • Backdating To Provisional: 35 U.S.C. § 119(e)(1) (pre-AIA) governs whether a non-provisional application gets effective filing date of provisional application. Dynamic Drinkware (Fed. Cir. 09/04/15) (alleged prior art reference not entitled to its provisional application’s date); New Railhead (Fed. Cir. 07/30/02) (challenged patent claim not entitled to provisional application’s filing date).
    • AIA: best mode stricken from effective-filing-date requirements under Secs. 120 and 119(e)(1) (getting date of provisional app.). (Sec. 15) {effective for cases filed on or after 09/16/11}
    • AIA (FITF): 35 U.S.C. § 100(i)(1) (AIA) (“The term ‘effective filing date’ for a claimed invention in a patent or application for patent means–(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).”)
    • AIA (FITF): “Section 120 of title 35, United States Code, is amended by striking `which is filed by an inventor or inventors named’ and inserting `which names an inventor or joint inventor’. This amendment does not apply to FITI patents or applications. Therefore, assignee-filed applications are not entitled to benefit under Sec. 120, under literal language of the statute.
  • “Fundamental Fairness” Requires Not Backdating Claim To Parent That Did Not Fully Support The Claim: “This court is mindful that continuing applications, such as Affymetrix’s application here, can only receive the benefit of an earlier-filed parent application if that parent fully supports the claims. If not supported in the parent application, fundamental fairness requires that claims to new matter receive, at best, the filing date of the continuing application.” Agilent (Fed. Cir. 06/04/09) (interference context; no single embodiment had each claim limitation).
  • Must Maintain Unbroken Chain Of Disclosure: For a patent claim to be backdated to filing date of an earlier application, each application leading back to that earlier application must have disclosed the later-claimed “invention,” and the chain of co-pendency must be unbroken. Zenon Envtl. (Fed. Cir. 11/07/07) (invalidating patent due to a break in the chain of disclosure); In re Reiffin (Fed. Cir. 07/27/09) (non-precedential) (cannot in reexamination correct a break in chain of disclosure); Tech. Licensing (Fed. Cir. 10/10/08) (“the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the [CIP], that the inventor had possession of the claim[] when the [ancestor] application was filed”); Lockwood (Fed. Cir. 03/04/97) (“In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.”) See also Fleetwood Mac, The Chain, on Rumours (1976) (“I can still hear you saying you would never break the chain.”)
  • The “Specific Reference” Requirement For Claiming Priority Is Strictly Construed: Each Application Required For Unbroken Chain Must Contain Specific Reference To Each Earlier Application Needed To Maintain Chain: “A patent must contain a specific reference to each prior-filed application to be entitled to those applications’ earlier filing dates. Incorporation by reference cannot satisfy this statutorily mandated specific reference requirement.” Droplets (Fed. Cir. 04/19/18) (aff’g PTAB that priority claim to only immediately preceding parent but not its earlier ancestor applications necessary to reach back to provisional, failed “specific reference” requirement of 37 CFR 1.78, despite incorporation by reference of that immediate parent which had correct priority claim back to provisional and despite cross reference to that provisional; and aff’g obviousness of claims over ancestor application publication). Failure to comply with “specific reference” requirement per governing CFR resulting in unpatentability over own ancestor published application “is not a ‘hypertechnicality’ that unfairly rendered the claims unpatentable. Section 120 places the burden on the patent owner to provide a clear, unbroken chain of priority.” Id. “The application seeking the benefit must state (or be amended to state) that it claims the benefit of the earlier-filed application’s filing date, identifying each earlier-filed application by number and explaining how the applications are related to one another.” Natural Alternatives (Fed. Cir. 10/01/18) (where CIP fifth application amended to remove priority claim to first four applications, and eighth application claimed priority to earlier applications through the fifth application, the priority claim chain was broken). See Encyclopaedia Britannica (Fed. Cir. 06/18/10) (aff’g anticipation by foreign counterpart because an intermediate application did not make specific reference to earlier co-pending application, even though later applications referred to earlier applications. No declaration filed. Reviewed legislative history.); Medtronic (Fed. Cir. 01/22/14) (“each intermediate application must recite every intervening application before it all the way back to” the sought-after effective filing date application.) Specific reference may be added by certificate of correction and suffices if noted on title page of the patent. E.I. du Pont (Fed. Cir. 05/14/08).
  • Sec. 120 Question Of Law?: “Entitlement to priority under 120 is a matter of law, and receives plenary review on appeal.” In re Daniels, 144 F.3d 1452, 1455 (Fed. Cir. 1998). But sole case cited by In re Daniels does not support this conclusion. ““Determination of a patent’s priority date is purely a question of law if the facts underlying that determination are undisputed.” Medtronic (Fed. Cir. 01/22/14) (aff’g Summ. J. of invalidity over ancestor published apps. where priority continuity was broken so not entitled to ancestor filing dates). “Whether an earlier-filed application possesses sufficient written description to qualify it as a priority document or is instead invalidating prior art is a fact-finding we review for substantial evidence.” Hologic (Fed. Cir. 03/14/18) (aff’g PTAB that ancestor PCT had sufficient written description for claims).
  • Claim Reciting Sec. 112(6/f) Element Is Not Entitled To Filing Date Of Ancestor Application That Did Not Disclose Issued Spec.’s Structure Corresponding To That Element:. Uniloc (Fed. Cir. 10/23/17) (non-precedential) (aff’g PTAB, claim not entitled to provisional’s filing date because Spec. structure corresponding to Sec. 112(6/f) element was new matter, not disclosed in provisional) [see Patently O commentary on Uniloc]; Lucent Tech. (Fed. Cir. 09/25/08) (ancestor application disclosed no structure supporting Sec. 112(6/f) elements).
  • Patent Owner May Be Estopped From Backdating Claims: Estopped where patent applicant had successfully argued to PTO that its published ancestor application did not disclose an element in the issued claim. Bradford (Fed. Cir. 04/29/10).

a) “filed before”

  • “Filed Before”?: Filing On Date Of Issuance Does Not Break Chain: “An application for patent for an invention disclosed … in an application previously filed in the United States, or as provided by section 363 of this title, … shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application ….” 35 U.S.C. § 120. Although contrary construction is plausible, more than 50 years history of court and PTO approval of same-day continuations, and widespread reliance thereon, and failure of the statute to refer to “day” or “date,” supports PTO position that a day is not the correct unit of measure for “before” and allowing same-day continuations under Sec. 120. Immersion (Fed. Cir. 06/21/16). This also applies to Sec. 121 (“if the divisional application is filed before the issuance of the patent on the other application”), but not to provisional applications under Sec. 119(e) (“if the application for patent … is filed not later than 12 months after the date on which the provisional application was filed.”)

b) patent owner’s burden

  • Patent Owner May Have Burden Of Production (“Going Forward With Evidence”): “Claims in a patent or patent application are not entitled to priority under § 120 at least until the patent owner proves entitlement to the PTO, the Board, or a federal court.” Natural Alternatives (Fed. Cir. 10/01/18) (aff’g Board finding that chain of claiming priority was broken). Burden of persuasion remains on patent challenger. But, “when neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective-filing date of an earlier filed application.” In these situations, the burden is on the patent owner “to come forward with evidence to prove entitlement to claim priority to an earlier filing date.” PowerOasis (Fed. Cir. 04/11/08) (Parent disclosed user/customer interface only on vending machine; CIP added embodiments where user interface was on customer’s laptop; claim construed ivo CIP disclosure to mean customer interface covered either location; as a result, claims not entitled to parent filing date, and, on Summ. J., were invalid for anticipation.). This burden of production includes “presenting persuasive argument” as well as evidence. Tech. Licensing (Fed. Cir. 10/10/08) (“[Once challenger meets burden of going forward with evidence that reference is prior art if patent filing date is it’s effective filing date] At that point TLC has the burden of going forward with evidence either that the prior art does not actually anticipate, or, as was attempted in this case, that it is not prior art because the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art. See id. This requires TLC to show not only the existence of the earlier application, but why the written description in the earlier application supports the claim. In the context of the allegedly anticipating Elantec prior art, that means producing sufficient evidence and argument to show that an ancestor to the ’250 patent, with a filing date prior to the Elantec date, contains a written description that supports all the limitations of claim 33, the claim being asserted. Assuming then that TLC’s evidence and argument in support of the earlier filing date is now before the court, the burden of going forward again shifts to the proponent of the invalidity defense, Gennum, to convince the court that TLC is not entitled to the benefit of the earlier filing date. ‘Convince’ is the operative word, because if the court is not persuaded by clear and convincing evidence that Gennum is correct, Gennum has failed to carry its ultimate burden of persuasion, and its defense of invalidity, based on anticipation by the Elantec art, fails.”) Accord D Three (Fed. Cir. 05/21/18) (aff’g Summ. J. invalidity by stipulation (ivo earlier sales of accused products) because patent owner failed to show claims entitled to priority date; “a ‘patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference.”); Paice (Ford) (Fed. Cir. 02/01/18) (remanding to PTAB to determine if CIP patent’s claims antedate named inventors’ own presumptive prior art PCT: “to prevail on its argument that the [patent owner’s earlier] PCT publication is not prior art to the electrical claims, Paice must show that the [alleged priority application] provides sufficient written description support for those claims.”); In re Katz (Fed. Cir. 02/18/11) (“Once an accused infringer establishes obviousness by clear and convincing evidence, the burden shifts to the patentee to prove priority over the invalidating prior art.”); see 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 once patent owner showed that invention was reduced to practice before the reference’s actual filing date); Cordance (Fed. Cir. 09/23/11) (aff’g JMOL that claims not entitled to grandparent’s filing date, because patent owner failed to link claims to earlier disclosure (no mention of burden)). Even when application is a continuation, if challenger meets burden of production identifying an invalidating intervening prior art reference, then patent owner has burden of production of entitlement to ancestor application’s filing date. Research Corp. Tech. (Fed. Cir. 12/08/10); see In re NTP (Fed. Cir. 08/01/11) (series of “continuation” applications: “for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120;” rejecting argument that Examiner must have implicitly decided the effective filing date issue); In re Magnum Oil (Fed. Cir. 07/25/16) (dictum: “a patent challenger has the burden of producing evidence to support a conclusion of unpatentability under § 102 or § 103, but a patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference.”); Hologic (Fed. Cir. 03/14/18) (aff’g PTAB that claims entitled to ancestor’s filing date: “To be entitled to the priority date of the earlier-filed [PCT, patent owner] must show that [the] PCT discloses what the [divisional of PCT national stage] patent claims, according to the written description requirement.”); but see Cummins-Allison (Fed. Cir. 05/25/12) (non-precedential) (reinstating jury verdict that claims entitled to continuation parent’s filing date, without mentioning this burden-shifting issue.)
  • TIPS: