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Same-Day Continuing Applications are Co-pending under s. 120

The outcome of this question of statutory construction was not really in doubt, given the fact that an adverse holding could invalidate thousands of patents which needed same-day copendency to avoid intervening prior art. Immersion Corp. v. HTC Corp., Appeal no. 2015-1574 (Fed. Cir., June 21, 2016).

Finding no clear answer in the language of s.120: “if filed before the patenting…on the first application…,” the panel gave great weight to the longstanding practice of the PTO in permitting priority claims when the continuing applications were filed on the same day that the parent application officially issued:

“This is not a case, as we have explained, where the language of the statute actually contradicts the longstanding  judicial and agency interpretation. Nor is it a case in which the longstanding agency position is plainly outside the agency’s granted authority. Here, the position is an essentially procedural one establishing when the agency will consider an input into its process (the legal act of “filing’) and an output of its process (the legal act of “patenting” to occur relative to each other—neither one being a precisely identifiable self-defining physical act, but a legally filing event.”

This is sensible but the Supreme Court, more than less, ignored Judge Moore’s reliance-based arguments in Myriad and colored the validity of all those patents claiming “purified and isolated” DNA. Of course, in this case the Fed. Cir. (Prost, Linn and Taranto) gave PTO practice a lot of weight, after failing to derive a firm answer from its somewhat metaphysical attempts to define “before” in s. 120. But you really don’t need to pour over this opinion – the panel admitted that “the particular language of section 120 that is at issue here can bear a day-as-unit meaning” but went on to uphold the PTO’s long-time practice of allowing “same day’ continuing applications. The sleeping dog of the law went back to its nap.


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