CAFC: "Original" Applications Include Continuations For the Purposes Of Inter Partes Reexam

Cooper Technologies Co. v. Director U.S. Patent and Trademark Office, (08-1130), August 19, 2008

Pursuant to section 4608 of the American Inventors Protection Act of 1999 (AIPA), the inter partes reexamination procedure is available for "any patent that issues from an original application filed in the United States on or after" November 29, 1999

Cooper challenged the propriety of an inter-partes reexamination request on a continuation patent, filed after November 29, 1999, whose parent applications were filed before that date. According to Cooper, the continuation did not qualify as an "original application" for the purposes of the AIPA. The PTO argued that "oringal applications" included continuations and other related applications

The CAFC looked to legislative and PTO rulemaking histories to determine whether PTO pronunciations on the meaning of "original application" were "procedural" or "substantive." The CAFC clearly found that the PTO's remarks were procedural, thus deserving of increased, Chevron-type deference on review.

In this case, the Patent Office’s interpretation of "original application" does not effect any change in existing law or policy; rather, it is a prospective clarification of ambiguous statutory language regarding a matter of procedure. It is therefore "interpretive"- rather than "substantive" . . . Because the Patent Office is specifically charged with administering statutory provisions relating to "the conduct of proceedings in the Office," 35 U.S.C. § 2(a)(2)(A), we give Chevron deference to its interpretations of those provisions.

Under the two-step Chevron analysis, the reviewing court (1) must "always first determine ‘whether Congress has directly spoken to the precise question at issue.’" When a phrase is not a defined term in a statute, and when the statutory context does not provide any "concrete indication of Congress’s intended meaning," the reviewing court (2) examines "whether, in its own interpretation of its responsibilities under the Act, the agency charged with the everyday administration of the provision applies ‘a permissible construction.’"

On the term "original application," the CAFC found that the term as used in the statute did not have an "established meaning in patent law." Citing numerous ambiguities in the PTO's documentation and the legislative history, the court could not find anything in the legislative history that makes Congress’s intended meaning of "original application" clear.

Turning to the PTO's interpretations of "original application," the CAFC found the PTO's interpretations permissible:

Reissue

The Patent Office [points out] that its interpretation of section 4608 does not foreclose inter partes reexamination of reissue patents, but simply limits those proceedings to reissues of original applications filed after November 29, 1999. Such reissues are deemed by operation of law to replace the surrendered originals and, thus, are entitled to treatment as original patents. See 35 U.S.C. § 252. We agree that this interpretation is reasonable.

Continuations

Cooper argued that allowing inter-partes reexaminations on continuations would violate 35 USC § 120 which states "An application . . . shall have the same effect, as to such invention, as though filed on the date of the prior application . . . or on an application similarly entitled to the benefit of the filing date of the first application." The CAFC disagreed with Cooper:

Cooper’s argument misconstrues section 120. The title of section 120 is "Benefit of earlier filing date in the United States." . . . The "effect" described in section 120 is the benefit of the earlier filing date - i.e., the benefit for purposes of priority and section 112; the statute itself makes this clear in the clause "or on an application similarity entitled to the benefit of the filing date of the first application." . . . Nothing in section 120 guarantees that a continuation filed after the effective date of the AIPA will be exempt from inter partes reexamination, just because its parent application
is . . . Construing section 120 . . . we held "[i]n essence, ‘having the same effect’ means having the benefit of the filing date of the earlier filed application" - i.e., the benefit of priority.

[W]e conclude that the Patent Office’s interpretation of section 4608 is permissible and therefore entitled to deference. Under the Patent Office’s construction, "original application" includes continuation applications.

AFFIRMED