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Federal Circuit Rules That “Same-Day Continuations” Are Proper

The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier.  In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation application filed on the same day that its parent application issued is not entitled to the parent priority date.  It is now without question that waiting to file a continuation, continuation-in-part, or divisional application until the day that the parent application issues as a patent  will still result in the continuing application being accorded the earlier priority date under 35 U.S.C. § 120.

In the instant case, Immersion Corporation (“Immersion”) filed a patent application related to touch control devices for a computer on January 19, 2000, which issued as U.S. Patent No. 6,429,846 on August 6, 2002.  On that same day, August 6, 2002, Immersion filed another application having the same written description as the ‘846 patent, which ultimately issued as U.S. Patent No. 7,148,875.  The parties do not dispute priority chain stemming from the ‘975 patent for several other patents asserted by Immersion against HTC.  A disputed link in the priority chain was the one between the ‘846 patent and the application that matured into the ‘975 patent.  If the ‘975 patent was not entitled to the earlier priority date of the ‘846 patent, the ‘975 patent would be invalid based on Immersion’s own international application publication.

District Court Judge Richard Andrews of the District of Delaware held that the ‘875 patent application was not “filed before the patenting” of the ’846 patent’s application within the meaning of 35 U.S.C. § 120.  In other words, Section 120 was interpreted to require that, to obtain the benefit of priority of a previously-filed co-pending application, a later application must be filed at least a day before the prior application issues as a patent.  The Federal Circuit disagreed.

According to 35 U.S.C. § 120, a continuation, continuation-in-part, or divisional application is to be “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.”  The Court explained that this language does not indicate whether a later application should be filed a day “before the patenting” of the earlier application, or whether smaller time increments are allowed.  Thus, as the Federal Circuit noted, “[a]s far as that language goes, filing can precede patenting on the same day.”  HTC argued that the term “before” in the context of Section 120 should be measured in units no smaller than a “day.”

Writing for the panel, Judge Taranto indicated that same-day continuations have been a norm throughout the entire history of the patent law in the US.  The Federal Circuit did not delve deeply into interpretation of the language of the statute but instead turned to this history.  The Court noted that, as early as 1864, the Supreme Court endorsed same-day continuations for priority-date purposes in Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1864).  This rule has since been followed by courts consistently and was codified by the 1952 Patent Act as Section 120.  Judge Taranto also noted that same-day continuations were a longstanding policy of the USPTO as well.

The Court expressed concern that HTC’s position “would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations.”  In reliance on the amicus brief by Intellectual Property Owners Association, the panel stated that “overturning the PTO’s position would affect the priority dates of more than ten thousand patents” and refused to cause a “large disruptive effect” to well-established policy.

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Brad M. Scheller is an experienced patent litigator and strategic counselor to start-up ventures and established businesses in the mechanical and electrical arts, with a focus in EV and battery technologies and advising clients on patent portfolio growth, management and enforcement. He represents clients before the United States Patent and Trademark Office and as lead counsel in federal district court and appellate litigation across the country.