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Federal Circuit Reaffirms Reasonable Approach To Continuation Applications

June 22, 2016

By: Patrick A. Quinlan

Hamilton Brook Smith Reynolds Alert

  • May be filed on the Same Day that the parent patent issues
  • Reaffirms long-standing continuation practice
  • It is still wise to file a continuing application at least one day before parent issues

In Immersion Corp. v. HTC Corp., the Federal Circuit announced a lenient approach in allowing a continuing application to be filed on the same day that the parent application issues as a patent.  Under 35 U.S.C. § 120, a continuation application is treated as having its parent patent’s filing date “if filed before the patenting or abandonment of or termination of proceedings on the [parent] application …” (emphasis added).  Following a literal interpretation of the statute, the lower court held that a continuation application filed on the same day as its parent application had issued was not entitled to claim priority to the would-be parent and thus was invalid due to prior art.

The Federal Circuit overturned the decision and rejected the lower court’s literal interpretation of the statute.  In its analysis, a three judge panel discussed the various possible time units that could be considered (e.g., days vs. minutes) in determining whether a continuation is filed before its parent, suggesting that a day unit might be the best fit with the statute if the statute were without history.  The Court did not settle on a definite unit of time, but in reaching its decision, relied primarily on the historical interpretation of the statute, as well as the Court’s concern about the possibility of invalidating more than 10,000 existing patents.

The Court gave great weight to the Patent and Trademark Office’s (PTO) historical granting of priority to an application filed on the same day as an earlier application, so long as the two were sufficiently related, known as Godfrey’s rule following an 1864 Supreme Court decision.  After Section 120 was codified in 1952, the PTO has consistently allowed continuations to be filed on the same day as their parents.  As the Court explained, “[n]one of the legislative history or contemporaneous commentary indicates an intent to alter Godfrey’s long-established result approving same-day continuations for priority-date purposes.  And adjudicatory reliance on Godfrey continued after 1952.”  The Court further justified its decision based on the reliance that a large number of patentees have placed on the same-day interpretation, concluding that “[w]e see no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy.”

The Federal Circuit’s decision should, for now, ease the concerns of patent holders having same-day priority claims, but the best practice going forward is to file any continuation application at least one day before the parent application issues as a patent.

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