{"id":2008,"date":"2018-04-19T12:17:26","date_gmt":"2018-04-19T16:17:26","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2008"},"modified":"2018-04-22T11:04:08","modified_gmt":"2018-04-22T15:04:08","slug":"2008","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2008","title":{"rendered":"There is no Transitive Property of Priority Claims; a Patent\u00a0Must Contain a Specific Reference to Each Prior-Filed Application"},"content":{"rendered":"

In Droplets, Inc., v. E*Trade Bank<\/a>, [2016-2504, 2016-2602] (April 19, 2018), the Federal Circuit\u00a0affirmed the Board\u2019s decision finding\u00a0all claims of U.S. Patent No.
\n8,402,115 invalid as obvious over a published grandparent application due to an improper priority claim.<\/p>\n

This application claimed priority to it’s immediate parent application, and to its ultimate\u00a0 great grand parent application, but failed to mention a priority claim between the parent application the grand parent application, or between the grand parent application and the great grand parent application:<\/p>\n

\"\"<\/a><\/p>\n

One might think that if B claims priority to A, C claims priority to B, and D claims priority to C, that this is sufficient for D to get credit for the filing date of A. D After all should D be entitled to priority of C, C should get the priority of B and B should get the priority of A.\u00a0 However, that is not how the Federal Circuit interpreted Sections 119 and 120 in this case, nor how it has interpreted these statutes in the past.<\/p>\n

The Federal Circuit noted that consistent with 35 U.S.C. \u00a7 120 and 37 C.F.R. \u00a7 1.78,
\nMPEP \u00a7 201.11 III.C. provides detailed guidance on how to claim\u00a0priority from multiple prior-filed applications. It states\u00a0that the reference to the prior applications must identify
\nall of the prior applications and indicate the relationship\u00a0(i.e., continuation, divisional, or continuation-in-part)\u00a0between each nonprovisional application in order to\u00a0establish copendency throughout the entire chain of prior\u00a0applications.<\/p>\n

The Federal Circuit rejected Droplets’ characterization of the issue as “hypertechnical.”\u00a0 The Federal Circuit also rejected Droplets’ more creative argument that the priority claim was incorporated by reference from the application whose priority was properly claimed, finding\u00a0\u00a7120\u2019s \u201cspecific reference\u201d requirement\u00a0does not contemplate incorporation by reference.<\/p>\n

The Federal Circuit reiterated that a patent\u00a0must contain a specific reference to each<\/em><\/strong> prior-filed application\u00a0to be entitled to those applications\u2019 earlier filing\u00a0dates, and added that incorporation by reference cannot satisfy this\u00a0statutorily mandated specific reference requirement. Because the patent at issued contained only a reference to its immediate parent, and not its grand parent, or great grand parent, the Federal Circuit affirmed the Board\u2019s decision finding all\u00a0claims of the patent invalid as obvious.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Droplets, Inc., v. E*Trade Bank, [2016-2504, 2016-2602] (April 19, 2018), the Federal Circuit\u00a0affirmed the Board\u2019s decision finding\u00a0all claims of U.S. Patent No. 8,402,115 invalid as obvious over a published grandparent application due to an improper priority claim. This application … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[59],"tags":[],"class_list":["post-2008","post","type-post","status-publish","format-standard","hentry","category-priority"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2008","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2008"}],"version-history":[{"count":4,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2008\/revisions"}],"predecessor-version":[{"id":2013,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2008\/revisions\/2013"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2008"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2008"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2008"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}