By Carl G. Peterson, Shumaker & Sieffert, P.A.

A recent decision by the Federal Circuit highlights the need for a full and proper priority claim and holds that merely incorporating, into an application, another application by reference will not save the day—even if the incorporated application has the missing pieces of an otherwise deficient priority claim for the application.  The appellant in Droplets, Inc. v. E*Trade Bank[1] argued that a specific reference to an earlier-filed application was sufficient to entitle a patent to the priority of the earlier-filed application despite a time gap in the priority chain between the patent at issue and the earlier-filed application.  The appellant also argued that an incorporation by reference of another application that included a valid priority claim to the earlier-filed application was sufficient to entitle the patent to the priority of the earlier-filed application.  The Federal Circuit rejected both arguments, holding that a patent must include an unbroken chain of priority to the earlier-filed application.

An applicant can claim the benefit of an earlier-filed patent application by including a specific reference to the application.  The patent at issue in Droplets, Inc. (U.S. Patent No. 8,402,115) contained in the specification a specific reference to the most recently filed application in the family and a specific reference (specifically, a purported benefit claim under 35 U.S.C. § 119(e)) to the earliest filed application in the family, but the patent specification did not contain a specific reference to an intervening application in the family.  The applications referenced in the patent did not create a chain of copending applications to the earliest filed application in the family.  The court held that a specific reference to an earlier-filed application is not sufficient to create a priority claim to the earlier-filed application unless (1) the earlier-filed application is copending, or (2) there is a specific reference to one or more intermediate applications that create a copendency chain to the earlier-filed application. 

The chart below from the Droplets opinion shows the pendencies for a family of applications and patents that includes the ‘115 patent.  The court found that the ‘115 patent (shown in purple) properly claimed the benefit of the filing date of previous copending U.S. Patent No. 7,502,838 (yellow) but did not properly claim the priority of the earliest application in the family, U.S. Provisional Application Serial No. 60/153,917 (blue), even though the ‘115 patent contained a claim for the benefit of the ‘917 provisional filing date.  The ‘115 patent did not include a reference to intervening U.S. Patent No. 6,687,745 (green), which was copending with the ‘838 patent and the ‘917 provisional.  The court invalidated the ‘115 patent as obvious under 35 U.S.C. § 103 in view of the Franco PCT (red, also a member of the family) because the ‘115 patent did not include a specific reference to the intervening ‘745 application.  The court found that the Franco PCT became prior art to the ‘115 patent because the ‘115 patent did not include a valid priority claim to the ‘917 provisional.

The court also found that the ‘115 patent’s incorporation by reference of the ‘838 patent was insufficient to entitle the ‘115 patent to the priority date of the ‘917 provisional, even though the parties agreed that the ‘838 patent properly claimed priority to the ‘917 provisional.

The patentee in Droplets should have included specific references to an unbroken chain of applications in the family with overlapping pendency, including the ‘838 patent, the ‘745 patent, and the ‘917 provisional.  The following paragraph is an example of what the patentee could have included to claim priority to the earliest filing date in the family in accordance with 37 CFR § 1.78 and 35 USC §§ 119 and 120 in order to establish a valid priority claim for the ‘115 patent:

The present application is a continuation of U.S. Patent Application Serial Number 10/720,728 filed November 24, 2003 (now U.S. Patent Number 7,502,838), which is a continuation of U.S. Patent Application Serial Number 09/599,382 filed June 22, 2000 (now U.S. Patent Number 6,687,745), which claims the benefit of U.S. Provisional Patent Application Serial Number 60/153,917 filed September 14, 1999, each of which is incorporated herein by reference in its entirety.

An Applicant should also use the form-fillable Application Data Sheet (ADS) PDF provided by the U.S. Patent & Trademark Office.  According to 37 CFR § 1.76(b)(5), a correctly filled out ADS constitutes the specific reference required by 35 U.S.C. §§ 119(e) and 120.  The layout of the priority section of the USPTO’s ADS form is useful in that it may make a time gap in the priority chain more apparent.  The priority claim of the most recently filed ADS takes precedence over any priority claim set forth by the first paragraph of the specification.

To summarize, a proper priority claim for a desired filing date must provide a clear, unbroken chain of priority in the form of specific references to a chain of applications having overlapping copendency back to the desired filing date, i.e., with no time gaps in the priority claim.  The form-fillable ADS form provided by the USPTO may help an Applicant to avoid missing an application in the chain, but an Applicant must pay careful attention to the completeness of the priority claim to perfect the priority claim to the desired filing date.

 

[1] Droplets, Inc. v. E*TRADE Bank, 2016-2504 (Fed. Cir. Apr. 19, 2018).