Federal Circuit Upholds USPTO’s Longstanding Policy on Same Day Continuation Practice

Chao Gao

June 23, 2016

On June 21, 2016, the Court of Appeals for the Federal Circuit (CAFC) reversed the district court’s decision in Immersion Corporation v. HTC Corporation (2015 U.S. Dist. LEXIS 20577 (D. Del. 2015)) and upheld the USPTO’s longstanding policy that a continuation application filed on the same day that the parent application issues is entitled to the filing date of the parent application.

At issue in this case is whether a continuation application filed on the same day that the parent application issues can properly claim benefit of the filing date of the parent application under 35 U.S.C. § 120, which states, in relevant part:

An application for patent for an invention… disclosed… in an application previously filed in the United States… which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, 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.

35 U.S.C. § 120, emphasis added. 

Immersion Corporation filed U.S. Patent Application No. 10/213,940 on the same day that its parent application issued (U.S. Patent No. 6,429,846), claiming benefit of the filing date of the parent application under § 120.  HTC Corporation contended that the ‘940 application was not entitled to the filing date of the ‘846 patent’s application under § 120, because the ‘940 application was not filed on the day before the issuance of the ‘846 patent.  The district court agreed with HTC Corporation, holding that a continuation application filed on the day that the parent application issues is not filed “before the patenting” of the first application as required by § 120.

In reversing the district court decision, the CAFC noted that § 120 does not explicitly require that continuation applications be filed at least a day prior to the issuance of the parent application, and acknowledged that “[a]s far as that language goes, filing can precede patenting on the same day.”  Absent specific language defining what “before” means in § 120, the CAFC analyzed the history of continuation practice to assist in the interpretation of the statute.  The Court found that the basis for same day continuations for priority-date purposes was established as early as 1864 in Godfrey v. Eames, 68 U.S. 317 (1864), where the Supreme Court held that “if a party choose to withdraw his application for a patent, and pay the forfeit, intending at the time of such withdrawal to file a new petition, and he accordingly do so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law.”  Id. at 325-326. The Court noted that this rule has since been consistently followed by the courts and adopted by the USPTO even after the 1952 Patent Act, which introduced § 120.  Therefore, the CAFC reasoned that “the repeated, consistent pre-1952 and post-1952 judicial and agency interpretations, in this area of evident public reliance, provide a powerful reason to read section 120 to preserve, not upset, the established position.”

The decision is available at: 

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1574.Opinion.6-17-2016.1.PDF