Earlier priority date given with passing reference in patent application
For important or keystone inventions, the initial patent application may expand to a number of further continuing applications (i.e., continuation, divisional and continuation-in-part applications) which all relate back to the base parent patent application. For example, the entrepreneur or company may develop additional features and aspects related to the base invention over the course of marketing the invention. It may be prudent to add the new features (i.e., inventive subject matter) to the base parent patent application. In these instances, subject matter which is common to both the first and second filed patent applications is afforded a priority date as of the filing date of the earlier filed first patent application. However, the new subject matter introduced into the second patent application is only afforded a priority date as of the filing date of the later filed second patent application.
In some situations, adding new inventive subject matter to the parent application may be detrimental to the overall strategy of protecting the invention. For example, the term of the second patent may be reduced. The term of the patent originating from the second patent application is calculated from the filing date of the earlier first filed patent application, instead of the filing date of the later filed second patent application. Also, for those claims which are directed to new subject matter, the base parent application (i.e., first filed patent application) may be considered prior art and be used against the second filed patent application.
A. Priority date is the primary dispute in EnOcean case
The issue in EnOcean v. Face Int’l. (Fed. Cir. Jan. 31, 2014) was related to the issue of priority dates for particular claims in EnOcean’s patent application. The issue arose in the context of an interference which is a dispute as to who should be awarded the patent on an invention. The opposing parties each had allowable claims directed to the same invention. The party that can prove that he/she was the first to invent is awarded the patent. EnOcean attempted to show that it invented the idea first based on an earlier filed patent application related to the patent application at issue by way of a claim of priority. If the benefit of priority could relate back to its first filed patent application, then EnOcean would be awarded the patent. If not, then Face would be awarded the patent. As such, it was important for EnOceanto prove that the priority date of their claimed invention could relate back to the filing date of the first filed patent application and receive the benefit therefrom. To do so, the claims in the second filed patent application must find support in the first filed patent application.
The priority date of claims in a second later filed patent application is afforded the filing date of the first filed patent application if the first filed patent application provides support.
B. Mere passing reference in first filed patent application provides support to establish priority date
EnOcean utilized the term “means for receiving” and “receiver” in the claims of the second filed patent application. To determine if the claims could claim priority back to the first filed patent application, the first filed patent application must provide support for “means for receiving” and “receiver” limitations. Face argued that the first filed patent application did not provide support for these terms because the first filed patent application included only a passing reference to a “receiver”. In particular, the only reference to the term “receiver” in the first filed patent application:
In this case, a typical scenario is that all the switches, for example light switches, upon actuation, emit one or a plurality of radio frequency telegrams which are received by a single receiver and the latter initiates the corresponding actions (lamp on/off, dimming of lamp, etc.). (emphasis in original).
Even with only a passing reference to “receiver’, the Federal Circuit held that the claims were supported by the first filed parent application. Even though the first filed patent application did not expressly describe the structure of the receiver and only included a passing reference, the specification must simply permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation so that he may perceive the bounds of the invention. Based on the expert testimony, the court held that one of ordinary skill in the art could know and understand the “receiver” structure from the description given above.
In determining the priority date of any claim of a patent application or patent, the patent application is read from the viewpoint of one of ordinary skill in the art. If one of ordinary skill in the art would know and understand all of the limitations of the claims recited in the second filed patent application from reading the first filed patent application, then the priority date of those claims is the filing date of the first filed patent application, not the second filed patent application.
C. Priority date resolved based on the “one of ordinary skill in the art” standard
The “one of ordinary skill in the art” standard can sometimes be unpredictable in litigation because reasonable minds may differ. Everyone, especially opposing parties, will have different opinions as to what “one of ordinary skill in the art” might understand from the specification of the patent. However, it also gives flexibility such that the patent process is not overly burdensome with overly stringent and formalistic rules that one must always follow, or otherwise, risk invalidity of the patent. For purposes of patent prosecution, the preference in many instances is to anticipate these issues and move away from the “ordinary skill” standard by including more information so that each limitation in the claims is clear as to what is being recited.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.