15Jun 2018

Silvia Salvadori - Patent Priority Claim: Incorporation by Reference is Not EnoughIn a recent case, Droplets, Inc. v. E*Trade Bank, the Federal Circuit agreed with the United States Patent and Trademark Office (USPTO) and with the Patent Trial and Appeal Board (PTAB) that a patent belonging to Droplets, Inc. was invalid because of a defective priority claim.

In so holding, the Court affirmed that a priority claim must be explicitly stated in the patent and cannot be incorporated by reference from an earlier patent.

The patent at issue, U.S. 8,402,115, claimed priority to U.S. patent 7,502,838 and to a provisional application. However, the full chain of priority from the ‘115 patent to the provisional application also included an intermediary patent, which was not specifically mentioned in the ‘115 patent.

How Did Droplets, Inc. Claim Priority?

Droplets, Inc. claimed that the ‘115 patent incorporated by reference the claim for priority to the provisional application, since it claimed priority to the ‘838 patent which, in turn, claimed priority to the intermediary patent which referred to the provisional application. The Court disagreed.  

According to the Court, to properly claim priority, it is necessary to recite the application number as well as the familiar relationship, either in the application data sheet or in the first reference of the specification.

The Court held that incorporation by reference, as argued by Droplets, Inc., does not meet these requirements because the patentee, and not the public, is in the best position to outline the chain of priority. According to the Court, only the description of the invention can be incorporated by reference in an application to satisfy the written description requirement.

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

Silvia Salvadori, PhD