Last week, in Immersion Corp. v. HTC Corp., the Intellectual Property Owners Association (IPO) filed a brief as amicus curiae in support of Plaintiff-Appellant Immersion Corp.  In that case, the District Court for the District of Delaware construed 35 U.S.C. § 120 to prohibit filing a continuation application on the day its immediate parent granted, contrary to established U.S. Patent and Trademark Office practice.  The District Court also refused to grant the Office any deference in the matter.

In its brief, the IPO asserts that the Federal Circuit "should hold that continuations that are filed on the day that the parent patent issues should be able to claim priority to the parent application's priority date."  In support of this assertion, the IPO argues that the District Court's decision contravened more than 150 years of patent practice tracing back to the 1863 Supreme Court case of Godfrey v. Eames, notes that another District Court reached the opposite conclusion, and points out that the Office has consistently interpreted § 120 to permit continuations that are filed on the same day that a parent patent issues.  The IPO also argues that Office's interpretation is entitled to deference.  Finally, the IPO concludes by providing an idea of the impact the District Court's decision will have on patentees if allowed to stand.

With regard to Godfrey, the IPO notes that the case involved a patent that issued from a second application that was filed on the same day that the first application was withdrawn by the patentee.  The defendant argued that by the second application lost entitlement to the first application's priority date.  However, the Supreme Court disagreed, holding that "if a party choose to withdraw his application for a patent . . . 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."  The IPO concludes that "per the rule in Godfrey, a continuation filed on the same day as its parent application's withdrawal is entitled to the parent's priority date."  The IPO also argues that:

Under the Godfrey rule, an application filed on the same day as its parent application's withdrawal constitutes a "continuous" application entitled to the parent's priority date. Therefore, § 120 should be interpreted in a similar manner for patented applications such that a continuation application can claim priority if it is filed on the same day that its parent application issues as a patent.

In support of this argument, the IPO notes that "the legislative history [concerning § 120] says nothing about overruling Godfrey or changing its rule that allows continuation applications to be filed on the same day that the parent application is withdrawn or matures into a patent."

The IPO also notes that "the only other district court to address the specific issue presented in this case has held that a continuation application can be filed on the day that the parent application issues as a patent without a loss of priority."  According to the IPO, that other court, the District Court for the Western District of Wisconsin, decided in MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978 (W.D. Wis. 2008), "that the same day filing satisfied the 'copendency requirement' of § 120 because the Patent Office has consistently defined 'before' to mean 'not later than.'"

As for the Office's interpretation of § 120, the IPO points out that the Office's guidance regarding copendency can be found in M.P.E.P. § 211.01(b)(I), which states:

Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.  If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application [emphasis added in IPO brief].

The IPO argues that the above interpretation is entitled to deference, contrary to the Delaware District Court's determination, explaining that:

The district court's holding that no Chevron deference is due requires one to adopt faulty logic, namely, that the statute requires action 'before' a given instant in time when that moment in time is not necessarily ascertainable.  Indeed, the statute and the regulations are silent about the precise time when a patent application is considered to issue.  Thus, there is ambiguity as to when a patent application must be filed to be 'before' a patent issues on the parent application.

The IPO explains further that "'patenting' could occur on the issue date when the clock strikes twelve o'clock in the morning, when the Patent Office opens, when the patentee is first sent a copy of the issued patent, when the patent is published in the Official Gazette, or at any other time on the issue date," and further that "a continuation application could be filed a day, a minute, a second, or even a fraction of a second before the patent issues (whenever that is deemed to be) and still be filed 'before' patenting."  The IPO argues that "[g]iven the large potential for confusion caused by the statute's reference to 'before' and the various alternatives for when 'patenting' could occur, the Patent Office's decision to interpret 'before' to mean 'not later than,' see M.P.E.P. § 711.02(c), is eminently reasonable."

In discussing the impact of the Delaware District Court's decision, the IPO indicates that it is "concerned that the district court's decision in this case will have the effect of divesting patentees of valuable rights to which, but for the change in law effected by the district court, they are entitled."  In quantifying this impact, the IPO notes that an analysis conducted at the IPO's request by Ocean Tomo determined that "as of May 1, 2015, of the 1,474,712 in-force patents that resulted from continuation applications, fully 12,300 have a filing date that is the same as the issue date of the parent."  The IPO also notes that this figure is conservative in that it does not take into account patents that resulted from parent applications that were abandoned or terminated on the day that the patent application was filed or that had an ancestor filed on the same day its parent was issued, abandoned, or terminated.  According to Ocean Tomo, an estimated 30,000 additional patents could fall into these latter categories.

The IPO brief concludes by stating that:

Amicus Curiae's members and others have relied on an interpretation of § 120 that is at odds with the district court's decision under review.  If the Court were to affirm that decision, it would call into question the validity of a sizable number of issued patents -- patents that were prosecuted in a manner consistent with Patent Office practice and Supreme Court precedent dating back over 150 years.  There is no reasonable justification for (and no countervailing benefits supporting) such a capricious, harmful departure from long-standing practice.