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IP Alert: Federal Circuit Rules in Favor of Same-Day Continuation Applications

June 21, 2016

Today, in Immersion Corp. v. HTC Corp., the U.S. Court of Appeals for the Federal Circuit ruled that a continuation application may be filed on the same day its parent application issues. Today’s decision reverses a decision from the U.S. District Court for the District of Delaware, which had held that to maintain continuity, the continuing application would have to be filed no later than the day before its parent application issues. This ruling is significant in that a contrary ruling would have opened the door to possible invalidation of numerous patents.

In Immersion, the parent application was filed on January 19, 2000, and issued on August 6, 2002. The patentee filed a first continuation application on the same day the parent application issued and subsequently filed a chain of further continuation applications. In light of a 2001 publication of a corresponding international application, maintenance of continuity would be required to avoid a statutory bar over the 2001 publication.

The district court had held that the continuation application should have been filed at least one day before the issue date to preserve continuity. The court relied on the language of 35 U.S.C. § 120, which provides, in part, that a later-filed application “shall have the same effect . . . 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. . . .” The district court held that the later-filed application was not “filed before the patenting” of the earlier application because it was filed on the same day.

The Federal Circuit rejected the reasoning of the district court. First, it found that the language of the statute did not specify any unit of time with respect to “filed before the patenting” so as to preclude a continuation filing on the same day as patenting of the earlier application. The Federal Circuit then found that same-day continuation applications were supported by legal precedent and agency interpretation of the statute. More specifically, the Federal Circuit found that (1) the Supreme Court long ago established the foundation for same-day continuations, and this rule was followed in subsequent cases; (2) the Patent Act of 1952 did not indicate any intent to change this rule; and (3) the U.S. Patent and Trademark Office had long authorized same-day continuations consistent with this rule.

The Federal Circuit also noted the significant ramifications of a contrary ruling, observing that “overturning the PTO’s position [likely] would affect the priority dates of more than ten thousand patents.” Past patent applicants had relied on the policy allowing same-day continuation filings and made investments in patents issuing from those applications. Accordingly, the Federal Circuit saw no reason to upset this policy.

For more information on today’s ruling, please contact Fitch Even partner Rudy I. Kratz, author of this alert.

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