Fed. Cir.: Deficient Claim for Priority Can't Be Fixed in a Subsequent Continuation

Encyclopaedia Britannica v. Alpine Electronics of America, Case No 09-1544. (June 18, 2010)

Britannica alleged infringement of two patents relating to a multimedia database search system for retrieving textual and graphical information.  Both patents stemmed from a series of continuations dating back to 1989 (the '917 application).

During litigation, defendants claimed (a) the patents were not entitled prioriy to 1989, and (b) the patents were invalid over a related Britannica WO application that published more than one year prior to the earliest priority date for the two patents.

One patent application (the '955 application) was filed on the same day the parent issued as a patent.  The application did not have a filing fee, inventor declaration, and the first page of the application was missing.  No claim for priority was made in the application.  The PTO responded with a Notice of Incomplete Application and a Notice to File Missing Parts, and indicated that the application would be assigned a filing date when it received page 1 of the specification unless the applicant established by petition that the application was complete without page 1.

Britannica responded with a petition arguing that the missing page was not necessary to understand the subject matter claimed, but did not include an oath or declaration from the inventors to support its petition.  The PTO ultimately dismissed the petition, and the application was ultimately abandoned.

Prior to abandonment, Britannica filed another continuation application that claimed priority to the '955 application, as well as the earlier applications.  The district court held that the continuation was not entiled to the earlier priority because it did not contain a specific reference to the earlier application as required by 35 U.S.C. § 120.  The district court reasoned that because the ’955 application was not entitled to the priority date, later filed patents could not claim priority through the later-filed  application.

Noting the issue was "one of first impression for this court", the Federal Circuit held that 35 U.S.C. § 120 requires that an intermediate applicationin a priority chain "contain a specific reference to the earlier filed application."

Section 120 allows an application for a patent to “have the same effect, as to such invention, as though filed on the date of the prior application.” However, there are several requirements a later-filed application must meet in order to be entitled to this benefit under § 120. First, the invention described in the new applica-tion must be “disclosed . . . in an application previously filed in the United States.” Second, the application must be “filed by an inventor or inventors named in the previously filed application.” Third, the application must be co-pending with the earlier application, or “filed before the patenting or abandonment of or termination of proceedings on the first application.” Fourth, the application must “contain[] or [be] amended to contain a specific reference to the earlier filed application.”

* * *

Later applications cannot amend the ’955 application and restore its entitlement to priority. The ’955 application failed to claim priority to the ’917 application. The applicants allowed the ’955 application to go abandoned even after being informed by the PTO of its infirmities. It makes no sense to allow the applicant to rewrite history and resurrect the ’955 application’s prior-ity claim. The ’955 application did not contain a specific reference to the ’917 application. Therefore, it failed to satisfy the requirements of § 120 and is not awarded the benefit of the earlier filing date in the United States. There does not actually appear to be any dispute over this—the ’955 application failed to meet all four require-ments of § 120 and therefore does not have the same effect as though filed on the date of the ’917 application. Britannica’s claim that a later application can cure this defect and restore the priority chain cannot be correct.

AFFIRMED

Read/download the opinion here (link)