The Importance of Mondays in U.S. Patent Prosecution

Although this may seem like rather obvious advice to those familiar with EP practice, applicants for U.S. continuation, continuation-in-part, and divisional patent applications who want to ensure that their priority claim to the parent patent application is valid are strongly encouraged to file such applications early, at the latest on the Monday preceding the Tuesday on which the parent application issues as a patent (all US patents are issued on Tuesdays).

35 U.S.C. § 120 of the U.S. Patent Act states that “An application for patent for an invention disclosed … in an application previously filed … which names an inventor or joint inventor 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” (emphasis added). The current approach, as set forth in the Manual of Patent Examining Procedures (MPEP), is that “[i]f the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application” (MPEP 211.01(b)). In other words, “before” referenced by the patent statute means “no later than.” Although the MPEP is not binding on the courts, many District Courts have adopted “the same date” approach, at least until recently (See e.g., Ultratec, Inc. v. Sorenson Communications, Inc., Case No. 13-cv-346-bbc, Dist Court W.D. Wisconsin 2014). The Federal Circuit, which is the primary authority on US patent law with the exception of selected cases considered by the US Supreme Court, has never ruled on this issue.

The District Court of Delaware, however, recently decided to go against this customary practice, ruling that filing a continuation application on the date of issuance of the parent application is too late for the priority claim to the parent application to be valid. In Immersion Corp. v. HTC Corp. (D. Del. 2015), on a motion for summary judgment, Judge Richard Andrews rendered a decision that, if affirmed on appeal, could result in many U.S patents being invalidated by their parents. In particular, Judge Andrews construed 35 U.S.C. § 120 to mean that to be eligible for priority of the filing date of the parent application, a continuation application must be filed on a day preceding the day of issuance of the parent application, i.e., “before.”

This case may be an anomaly.  Furthermore, other District Courts are under no obligation to follow the example of the Delaware District Court, and have sided with the USPTO approach in the past in regard to this issue. It is also not yet clear whether the case will be considered by the Federal Circuit on appeal. The final judgment entered on 25 March 2015, interestingly, by Honorable Timothy B. Dyk, a Federal Circuit Judge sitting by designation, reserves the right of the patentee to appeal the summary judgment decision on the priority claim determination. The patentee now has 30 days from the judgment order to file an appeal. Thus, we may yet hear the Federal Circuit’s take on this issue.

However, in the meantime, other US District Courts may decide to adopt the Delaware District approach. Therefore, the possibility that a continuation, continuation-in-part, or divisional application, despite being filed on the day of issuance of the parent, will NOT be entitled to claim priority to the filing date of the parent is real, creating a risk in which the parent is prior art against the child application. Accordingly, to be on the safe side, applicants are advised to follow the European approach and file any U.S. continuation, continuation-in-part, or divisional applications at the latest by the Monday preceding the Tuesday issuance of the parent.

Typically, an applicant receives an Issue Notification indicating the projected issue date, and thus such a date is known ahead of time. However, the US Patent and Trademark Office (USPTO) has not been so diligent in the past, and thus many applicants did not know when their patents would issue other than by checking whether it issued each Tuesday after paying the issue fee. Accordingly, for greater safety, it is advisable to file any U.S. continuation, continuation-in-part, or divisional applications before or shortly after paying the issue fee.

If you have any questions on this article please get in touch with your usual GJE contact.