CAFC Gives Patentee Leeway in Claiming Priority and Correcting PTO Mistakes

ScreenShot028E.I. du Pont v. MacDermid Printing (Fed. Cir. 2008).

Rapid Appeal: The first thing that is surprising about this opinion is the quick decision pace. The N.J. district court denied DuPont’s preliminary injunction on August 13, 2007. The CAFC heard oral arguments on April 9, 2008 and then issued its precedential opinion on May 14, 2008. The decision time is well under half of the average in-process time for precedential CAFC opinions. Knowing that, it is not surprising that the opinion was written by Chief Judge Paul Michel and included CIT Judge Pogue sitting by designation. One of Judge Michel’s top priorities as Chief is to speed the appeal process and help avoid serious detriment caused by delay.

Summary: The CAFC vacated a lower court’s denial of preliminary relief — finding that the lower court had improperly refused to recognize DuPont’s patent priority claim to an earlier provisional application.

Claiming Priority: DuPont first filed a provisional application; followed eleven months later by a non-provisional utility application claiming priority using non-standard language. (“This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING.”) The issued patent did not reference the original provisional until after DuPont obtained a certificate of correction.  To complicate the matter, DuPont’s litigation counsel originally made “incorrect statements as to the priority date” — apparently forgetting the legal effect of a provisional application.

35 U.S.C. § 119(e)(1) provides four requirements to claim priority to a provisional application:

  1. The provisional must adequately disclose the claimed invention;
  2. The non-provisional must be filed within 12–months of the provisional;
  3. Inventorship must overlap; and
  4. The non-provisional must include a specific reference to the provisional.

ScreenShot029Overlapping Inventorship: The specification of the provisional and non-provisional were identical. However, the provisional named only one inventor while the non-provisional named five. The defendant here argued that the provisional application should have been amended to properly identify the five inventors. On appeal, the CAFC rejected that argument in two steps: First, the appellate panel held that – as a matter of law – inventorship overlaps when both applications include at least one common inventor. Second, the panel re-affirmed that correction of inventorship for a provisional application is only necessary to establish an overlap of inventorship. See MPEP § 201.03

Specific Reference to the Original: DuPont used non-standard language in the non-provisional application data sheet (ADS) to claim priority to the provisional. On appeal, the CAFC held that there are no “magic words” required by MPEP § 201.11.  Rather, the standard is whether a “reasonable person reading the language … would have concluded that the applicant was claiming priority to an earlier provisional application.”  There is no question here that the language used by DuPont conveys the proper message.

Notice of PTO Error: The prosecution history included evidence that the PTO did not originally recognize DuPont’s priority claim. MacDermid argues that once an applicant is on notice of a PTO error — it should be required to ensure that the error is corrected before the application issues. In essence, MacDermid argues that the error in failing to reference the provisional in the originally issued application was DuPont’s error because the company was on notice of the PTO mistakes. On appeal, the CAFC rejected the notion that an applicant’s failure to diligently prosecute converts a PTO error into an applicant error.

“We hold that a lack of diligence during prosecution, at least under the facts of this case, does not convert a PTO error into an applicant error for the purpose of seeking a post-issuance certificate of correction. . . . It is, of course, desirable to have applicants correct the PTO’s mistakes in pending applications as soon as possible so that the correct information is reflected in published applications and issued patents. Nevertheless, nothing in the statute conditions eligibility for a certificate to correct PTO error on the applicant’s diligence in correcting the mistake, and the statute does not set any time limit for seeking such corrections.”

Vacated and Remanded

32 thoughts on “CAFC Gives Patentee Leeway in Claiming Priority and Correcting PTO Mistakes

  1. 32

    “Also, why no discussion of Southwest Software, Inc. v. Harlequin Inc., Sept. 18 2006, where the Federal Circuit, in a case of first impression, ruled that when the USPTO issues a ‘certificate of correction’ of a mistake made by the USPTO in printing a patent, the corrected patent has effect only for suits brought AFTER the correction?”

    Perhaps because, as the opinion notes, “the district court did not reach the parties’ remaining arguments as to validity and enforceability”

  2. 31

    Thanks, Paul Morgan, for the CAFC case, although it was Sept. 18, 2000, not 2006. Cite is 226 F.3d 1280.

  3. 30

    As noted above “37 C.F.R. 1.78(5)(iii) permits the required reference to be in the ADS, instead of the specification.” But why would anyone fully rely on [as here] “PTO clerical accuracy” [sic?] in printing the vital priority information from the ADS onto the issued patent when an expensive and delaying legal mess like this [in which even the DuPont trial lawyers are said to have been initially confused] can be so EASILY AVOIDED by simply also typing the priority date case information into the first paragraph of the specification, where it always has been, and is still perfectly proper?
    Also, why no discussion of Southwest Software, Inc. v. Harlequin Inc., Sept. 18 2006, where the Federal Circuit, in a case of first impression, ruled that when the USPTO issues a “certificate of correction” of a mistake made by the USPTO in printing a patent, the corrected patent has effect only for suits brought AFTER the correction?

  4. 29

    “Lol, I’m dudas peterlin, the other jon’s, and possibly Gdubbaya himself”

    Well, that explains all the spare time.

  5. 28

    Lol, I’m dudas peterlin, the other jon’s, and possibly Gdubbaya himself but I’m no DC.

  6. 27

    Well I should say “benefit claim” and in this situation 1.78 4 i says: Any nonprovisional application or international application designating
    the United States of America claiming the benefit of one or more prior-
    filed provisional applications must contain or be amended to contain a
    reference to each such prior-filed provisional application, identifying it by
    the provisional application number (consisting of series code and serial
    number).

    You’ll notice the part about “claiming the benefit of”. JD (and many others) interprets this to be designating a subset of applications, but it could just as well be interpreted to be any application that actually does contain a claim of benefit. This was what the discussion was about in PTA iirc and they probably said that they went with the way JD thinks about it until it can be sorted out to not be stated improperly or to actually say that a claim of benefit must be made or that the reference back must be made in a certain standard format (as a poster far above seems to have alluded to where he speaks about the office not requiring it).

  7. 26

    MM=EK6=DC

    Dennis, come on – this thread is a dud. Stop trying to pump it up with arguments that the language wasn’t obvious.

  8. 25

    “This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING.”

    Good lord!!! That sounds like something a temp secretary would type if her assigned attorney, drunk in Hawaii, called her at home at 11:00 pm EST to do an “emergency e-filing.”

  9. 24

    I withdraw my “invincible” crack.

    It may be helpful to note that 119a-d speak only to claiming the benefit of a prior filed _foreign_ application.

    US domestic “priority” claims (e.g., CON, CIP, DIV) are in 35 USC 120. Priority is in quotes here because the statute does not appear to refer to “priority”.

    Confusingly, the split in the CFR is different.

    37 CFR 1.78 speaks to “domestic priority” both provisional and non-provisional (+PCT)

    37 CFR 1.55 speaks to foreign priority.

    So in a prov to non-prov scenario, all that is needed is the specific reference in the non-prov to the prov, and to file the non-prov within 1 year of the prov. Neither the rules nor the laws say anything about needing to make a “priority claim” in this situation.

  10. 23

    Nope you’re right you don’t have to do that apparently. Apparently you automatically get a claim of benefit in a prov to nonprov as in JD’s alternate interpretation of 1.78 it looks like the claim of priority is automatic in provisionals as long as within 12 mo’s and contains a reference to them. I seem to recall something about this being brought up in PTA and how it was unclear but was being taken a certain way until it got cleared up by making the rule more specific. I wonder why the court went on about his reference being taken as a claim of priority, it’s most certainly not, it’s just that they’re taking the statute and rules to mean that you automatically get a claim of priority if you make a reference. That’s a rather large assumption to make when that’s not what the statute says. Well, all in a days judicial interpretationlol I suppose. The whole issue arises from the statute not spelling out there must be a claim for priority in 119 e like in 119 b, but instead leaving it wide open, and then us having a rule saying that there are applications claiming priority to provisionals when no such actual claim (as the term is used in 119b) occured, it’s merely the application having the same effect as the prior filed one’s filing date. It’s an “entitlement” in 120, a claim in 119b and simply what occurs in 199e.

  11. 22

    With respect to this case, I don’t see an assignment of costs in the opinion. IMO, MacDermid should bear costs for both sides of this CAFC proceeding, since their arguments were frivolous, and proceeding in such manner should not be without adverse consequences.

  12. 20

    Wow. We’ve hit the Friday afternoon twilight zone early.

    USC 111 (5) (b) speaks to circumstances under which a provisional goes abandoned. A provisional goes abandoned one year after its filing, unless it is converted to a non-provisional application.

    Such conversion is possible, although it is almost never done. In cloud-cuckoo land, this optional provisional of the law is apparently being interpreted as a “requirement” that must be followed in order for a separate US application B to claim priority to a provisional A (i.e., A itself must be made non-provisional for the priority claim from B to A to be valid).

    This assertion is simply ignorance in action. Soon it will be a display of “invincible ignorance”.

  13. 19

    ^ That should have been posted right after my post you re’ed to. In this event the court is all over the place talking about how one should or should not take their bs language when all this boils down to is did they request for the director to make the prov available under 111(a)? If they did then they automatically get the claim of priority.

    Where’s the request?

  14. 18

    Looking further into the matter I see that you don’t have to claim the benefit in a non-prov from a prov if you do something else. So even disregarding the lack of a claim of priority let’s go to the statute, and let’s be clear what is happening here. When you file a provisional under 111 (b) Provisional application you see in 111 (b) 5 that a provisional application MAY be treated as an application filed under section (a) (i.e. a nonprov) if they timely request this to happen. That’s IF they request that this happen. I haven’t even seen this request yet. Presuming it’s somewhere in there, then we have the situation in 111 (e) 1 happening where all you have to do is reference the prov application and you have a claim of benefit. If however that request is not there, then this nonprov does not get the priority date.

    Where’s the request to the director to make the application filed under 111 (b) count under 111 (a)? I dun see it.

  15. 17

    Oh, sorry I’ll be dang, I didn’t complete that post it’s open in another window lol stuck at spam.

  16. 16

    JD I just got through explaining that the reason that 1.76 says what it does is because you get an automatic claim of priority when dealing with provisionals, and that’s according to 119 e. I recognized that the reference is fully acceptable. But then, you have to have fulfilled the requirement of 111 b(5) to even get 119 e and I can’t find them fulfilling that req.

  17. 15

    “Let’s read 37 1.76 a shall we?”

    Aren’t you the guy always complaining about reading comprehension? Let’s read it again. Of course, we should probably read the right section, 37 CFR 1.78(a).

    Assuming your quotations are correct, it begins with “Any nonprov app CLAIMING THE BENEFIT of one or more prior-filed provapps…” The first thing to note is that this phrase identifies the category of applications to which the rest of the sentence applies. This part does NOT impose a requirement on the application, only a category (those applications that are claiming the benefit of a prior application). The NEXT part of the sentence imposes the requirement. See, you can tell, because that’s the part of the sentence following the word “MUST”: “must contain or be amended to contain a reference to each such prior-filed provisional application, identifying it…” Interestingly, the sentence you complained about indeed contains a reference to the prior-filed provisional application, identifying it by number and filing date. So, it appears that we’ve complied with this part.

    Next, you seem to be suggesting that the regulations require an express priority claim. Now, let’s go to 37 CFR 1.76: “Domestic priority information. This information includes the application number, the filing date … and RELATIONSHIP of each application for which a benefit is claimed … Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e)…” Interesting! Note again that the part “for which a benefit is claimed” does not impose a requirement on the applicant, but merely describes the category of applications we’re discussing. The actual requirement is application #, filing date, and RELATIONSHIP. The sentence you’re complaining about says “nonprovisional of provisional XXXXX. That certainly describes a relationship.

    So, what part of the reference did you not understand?

  18. 14

    “”This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING.”

    As the Fed. Cir. correctly found, any reasonable person would understand this to be a claim of priority to the provisional. Being deliberately, willfully, gleefully obtuse is not reasonable.

    Nothing new here folks. Let’s move along.

  19. 13

    “Which would mean what, exactly, other than a priority claim?”

    It would mean exactly what it says, that the application is a non-provisional of a provisional. That does not mean that you claimed the benefit of one or more prior-filed prov applications.

    Let’s read 37 1.76 a shall we? It starts of with paragraph 1. When we get to paragraph 5 (i) reads Any nonprov app CLAIMING THE BENEFIT of one or more prior-filed provapps must contain or be amended to contain a referece to each such prior-filed provisional application identifying it. Then we move down to 5(iii) and see If the later-filed app is a nonprov app the refrence must be included in an application data sheet or the specification must contain or be amended to contain such reference.

    Notice, it is the references to the applications which must be either in the spec first sentence or ADS, not the Claim Of Benefit. I presume that can be anywhere in this case, but in this case I don’t see it in the ADS, all I see is “hur, the relationship of this case to another case is that it is a non-provisional to a provisional WHICH IS PENDING”. That’s all nice and well, maybe at some point you’d like to claim priority? I have over a hundred cases on my docket who have managed to do this correctly, why are these guys anything special?

    FYI, if they put this stuff in the ADS then they usually make a little box that says:

    App no.: | Filing date: |Priority claimed:
    10000000 | 01/01/01 |Yes

    Guess what that implies? You can in fact list priority information without claiming priority to it. Would I happen to know why you wouldn’t? No, I do not.

  20. 12

    Sasquatch: “What it tells me is that it is a non-provisional of provisional app xxxxxxxx.”

    Which would mean what, exactly, other than a priority claim?”

    Well, I agree with you because it seems to be what was intended. But the sentence is not grammatically correct.

  21. 11

    MadProsecutor: “I believe that you are mistaken. 37 C.F.R. 1.78(5)(iii) permits the required reference to be in the ADS, instead of the specification. Thus, it is not that du Pont substantially complied with the requirements of the rules, but completely complied with the requirements of the rules.”

    That is correct. And if E6k is an examiner he/she should know that.

  22. 10

    E6k, I believe that you are mistaken. 37 C.F.R. 1.78(5)(iii) permits the required reference to be in the ADS, instead of the specification. Thus, it is not that du Pont substantially complied with the requirements of the rules, but completely complied with the requirements of the rules.

  23. 9

    “Hardly tells me that you’re claiming priority.”

    Like I said, thinking people should resist the urge to rely on magic words. Unthinking people will continue to do so.

    Thanks for proving my point.

  24. 8

    “What it tells me is that it is a non-provisional of provisional app xxxxxxxx.”

    Which would mean what, exactly, other than a priority claim?

    In the real-world (at least the patent professional’s version of the real world), people say something like this all the time. This is awfully similar to the recitation on a lot of issued patents that says “… a continuation of XXXXX, which is a continuation-in-part of YYYYY …” Are you telling me that you never understood that to be a priority claim? Or that the public has been misled by all of those patent publications about the nature of the relationship?

  25. 7

    “As the court correctly noted, applicants are not required to use ‘magic words.’ The PTO loves to glorify form over substance. Thinking people should resist that urge.”

    You seem to be suggesting that the Fed. Cir. rejected the PTO’s supposed requirement to use special words. Not so. The opinion appears to exaplain that no special words are required BECAUSE the MPEP uses the language “such as.” In other words, no special words are required because the PTO does not require special words.

  26. 6

    “MacDermid argues that once an applicant is on notice of a PTO error — it should be required to ensure that the error is corrected before the application issues.”

    I have to agree with this, one of the key things about priority is putting the public on notice within the patent itself of the priority date. You’re not entitled to priority until you have the correct reference back to it in the spec.

    “This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING.”

    Hardly tells me that you’re claiming priority. What it tells me is that it is a non-provisional of provisional app xxxxxxxx. The “magic language” excluded is that you’re claiming priority. There is no such language here. PERHAPS in conjunction with the ADS it should have been noticed, but the wording is wrong in its effect so far as I can see and that is a requirement for obtaining priority. The DC was right priority is not something that magically happens just because you throw in some vague wording to meet the requirement of stating that you’re claiming priority to the prior application.

    Do this at your own risk.

  27. 5

    “The PTO loves to glorify form over substance. Thinking people should resist that urge.”

    The thing is with magic words is that they are so hard to remember. Like invoking means plus function claims under 112P6. I can never remember what words to use. I think one of the words is function maybe? None of my engineering courses were this hard.

    /sarcasm off

  28. 4

    As the court correctly noted, applicants are not required to use “magic words.” The PTO loves to glorify form over substance. Thinking people should resist that urge.

  29. 3

    “MacDermid tried to construct a house of cards.”

    I agree. This is another example of “No Argument Left Behind.” Sadly, it worked at the district court level, which will only encourage future throwing-everything-against-the-wall efforts.

  30. 2

    MacDermid tried to construct a house of cards. Priority was properly claimed by the ADS. So, the points argued by MacDermid amounted to nothing, inasmuch as the claim was properly made.

  31. 1

    Interesting case.

    Surprised that DuPont counsel does not have its priority boilerplate down.

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