{1:40 minutes to read} A significant case for the patent law industry is currently on appeal before the Federal Circuit court. The case, Immersion Corp. v  HTC Corp., could decide what happens when an application is filed before the patenting of its parent application. Oral arguments for this case will be heard by the court in the first week of May 2016.

The case involves the interpretation of statute 35 U.S.C. 120, which states that:

“An application for a patent for an invention disclosed in an application previously filed 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.” 

The U.S. District Court had refused to give deference to the USPTO’s interpretation of the statute, which allows same-day filings of continuing applications, and held that “before” means “before.” In other words, even if the second application is filed on the same day in which the prior application issues, the USPTO will consider the filing to have occurred “before” issuance.

Instead, the District Court held that in order to show that the second application was finally filed, the defendant must produce some evidence to prove that it filed the continuation application before the parent patent issued.

The defendant, HTC, asserted that this would be an impossible burden to meet if, for example, a patent automatically was set to issue at 12:00:01 am of the “issue day.”

The District Court found that the continuation patent was not entitled to the priority date claimed and, thus, it was anticipated by intervening prior art. The defendant appealed to the Federal Circuit.

The USPTO filed an amicus brief with the Federal Circuit in which it agreed with the defendant, discussing that if 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.

However, should the Federal Court disagree with the USPTO’s position, thousands of patents might end up being invalidated. Therefore, this is a very important case with huge implications for many patent holders.

Contact me with questions or comments at silvia@salvadorilaw.com.

Silvia Salvadori, PhD

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