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June 18, 2010

Broken Chain

7,051,018 & 7,082,437, owned by Encyclopaedia Britannica, "relate to a multimedia database search system for retrieving textual and graphical information." The patents "claim priority back to October 26, 1989 through a chain of patents and patent applications." That priority chain was broken by a prosecution mistake in an intervening application, 08/113,955. As a result, "Britannica's foreign patent application, WO91/06916, published on May 16, 1991, was found to anticipate under 35 U.S.C. § 102(b)."

Encyclopaedia Britannica v. Apline Electronics et al (CAFC 2009-1544, -1545) precedential

The '955 application was filed on August 31, 1993... The '955 application was not submitted with a filing fee or a declaration signed by the named inventors and was missing its first page entirely... It made no claim of priority to any earlier filed applications; such a claim is generally made on the first page of the application.

The PTO notified Britannica of the error.

Britannica responded to the notices by filing a Petition for Granting a Filing Date, in which Britannica argued that the missing page was not necessary to understand the subject matter claimed and requested that the application be accepted without the omitted page. Britannica did not include an oath or declaration from the inventors to support its petition. The PTO issued a Decision on Petition, stating that the application was prima facie incomplete without the first page of the specification and that Britannica's argument that the first page was unnecessary could not be accepted without an oath or declaration from the inventors as required by the Manual of Patent Examining Procedure (MPEP) § 608.01. See Manual of Patent Examining Procedure 600-28 to -29 (5th ed. Rev. 15 Aug. 1993). The PTO dismissed Britannica's Petition for Granting a Filing Date without prejudice, stating that the amended application without page 1 could receive the filing date of August 31, 1993, if Britannica filed a request for reconsideration along with an oath or declaration from the inventors stating that their invention was adequately disclosed in the application without page 1. Britannica requested a four-month extension on February 28, 1994, but never filed a request for reconsideration. The PTO issued a notice of abandonment for the '955 application on March 23, 1995.

The court held that the '955 application was not entitled to the priority date of the [earlier-filed] '917 application because it did not contain a specific reference to the earlier application as required by 35 U.S.C. § 120. The court reasoned that because the '955 application was not entitled to claim priority to the '917 application, no later patent in the chain could claim priority to the '917 application through the '955 application.

Because the patents in suit could not claim priority through the '955 application to the '917 application's filing date (October 26, 1989), the district court held that the patents were invalid as anticipated by the foreign patent application, which was published May 16, 1991.

Hence appeal by Britannica.

The sole issue on appeal, one of first impression for this court, is whether 35 U.S.C. § 120 requires an intermediate application in a priority chain to "contain a specific reference to the earlier filed application."3

3 Our predecessor court previously established that there is no limitation under the statute to the number of applications through which a later application can trace its claim to the benefit of a first application's filing date. See In re Henricksen, 399 F.2d 253 (CCPA 1968).

Section 120 allows an application for a patent to "have the same effect, as to such invention, as though filed on the date of the prior application." Id. However, there are several requirements a later-filed application must meet in order to be entitled to this benefit under § 120. First, the invention described in the new application must be "disclosed . . . in an application previously filed in the United States." Id. Second, the application must be "filed by an inventor or inventors named in the previously filed application." Id. Third, the application must be co-pending with the earlier application, or "filed before the patenting or abandonment of or termination of proceedings on the first application." Id. Fourth, the application must "contain[] or [be] amended to contain a specific reference to the earlier filed application." Id.

With respect to the third requirement, an application can also claim the benefit of the filing date of an earlier application through a chain of co-pending applications. Even if a new application is not co-pending with the first application, § 120 states that the application can meet the co-pendency requirement if it is "filed before the patenting or abandonment of or termination of proceedings on . . . an application similarly entitled to the benefit of the filing date of the first application." Id.

An encyclopedia of arguments by Britannica fell by the wayside, including that a later application can correct priority entitlement.

Summary judgment was appropriated, and the district court got it right.

Summary judgment in this case hinged entirely on the issue of statutory interpretation. We conclude that § 120 requires each application in the chain of priority to refer to the prior applications. Because the '955 application failed to specifically reference the earlier filed '917 application, it is not entitled to the priority date of the '917 application under § 120. Because the '955 application did not claim priority to the '917 application, the patents in suit cannot claim priority to the '917 application through the '955 application.


Posted by Patent Hawk at June 18, 2010 5:55 PM | Prosecution


Why, why, why do people do this? When the USPTO says you forgot a piece of paper, just send them the freakin' piece of paper!!!!!!

Posted by: Patent_Medicine at June 22, 2010 3:29 AM


Agreed. But sometimes it's more complicated than it appears from the record. A lot of these screw-ups are caused by staff who think they are doing really good work.

One of our paralegals, admittedly challenged, filed an appl in which the abstract was single-spaced. PTO sends a notice saying we have to file a substitute specification, which is what I instructed the PL to do. After all, it's all in .doc, all you gotta' do is fix the problem, print it, scan it, and file it. No fee. No problem. End of the issue, so I thought.

But, noooo. She figures all she really needs to do is send them the abstract double spaced. She calls the main info desk, gets directed to some anonymous cog who tells her: sure, just file the corrected abstract, why file the whole thing?

That course of action, which she took on her own to save herself 10 minutes of effort, resulted in abandonment. It took longer than 10 minutes to call the USPTO, so what did she really save. Nothing. Ever try to use a phone conversation with an anonymous cog to justify not following USPTO written instructions? Don't.

She's no longer employed here, BTW.

Posted by: Babel Boy at June 23, 2010 7:36 AM


And who was responsible for overseeing the poor paralegal who had the good intentions of saving the firm time and money? Do you not have a "second set of eyes" system?

Perhaps the wrong person was let go...

Posted by: Pedantic Pete at June 23, 2010 12:42 PM

Pedantic Pete, yeah. The "poor paralegal." Idiot conclusion.

I gave her complete, unambiguous, and uncertain instructions to file the substitute specification according to the notice. She then ignored my instructions and the USTPO instructions, went her own way, called the PTO, made her own contrary decisions, and filed the document without my knowledge.

She wasn't saving the firm or the client a dime -- she was on salary. She thought she was saving herself 10 minutes worth of trouble by not printing and scanning the whole spec. She cost the client and the firm hundreds or thousands of dollars, we don't know the extent of the damage yet.

Part of being a competent patent practitioner is identifying and eliminating incompetent staff.

Now, let's hear you bawling for the "poor paralegal." If you are a practitioner, which I seriously doubt, and if you're defending such conduct, you're incompetent and a danger to your clients and malpractice carrier.

Posted by: Babel Boy at June 24, 2010 7:31 AM

"...and filed the document without my knowledge.

"we don't know the extent of the damage yet."

Far from "if you're defending such conduct", I think the "identifying and eliminating incompetent staff" hasn't gone far enough if those responsible are pinning the blame on clerical workers while wanting to skate scott-free.

Part of running a competent patent practice is identifying and eliminating incompetent patent practitioners. And I know (not seriously doubt) that you do not know how to run a practice.

Posted by: Pedantic Pete at June 24, 2010 8:31 AM

Doesn't Dickstein have a receipt stamped by the PTO that acknowledges receipt of page 1? I mean, that's why you get receipts (and of course the rules require one).

I've had plenty of cases where the PTO sent me a Notice of Omitted Items and told me I wasn't getting my filing date until I submitted the allegedly missing item. I just wave my receipt at them and say, "You acknowledged that I submitted everything listed on this receipt, so if it's missing, it's your fault PTO. But as a courtesy, here's a copy of what you misplaced. Now give me my original filing date. Thank you." Works like a charm every time.

As for BB's situation, I must say it is very hard to supervise rogue employees. From the ones in the mail room that throw away mail because they don't feel like delivering it, to the paralegals that think they are just as qualified to practice as attorneys and then try to do so (without a license and with sometimes disastrous consequences). If you think running a patent practice is easy, I invite you to come on out and try.

Posted by: pong at June 25, 2010 8:24 AM


O, I grant it is not easy - I just take offense at the blame and dodge game. Give me people (at any level) that are willing to step up to the plate and take responsibility (and that includes responsibility for those under your command) over self righteous, not-my-fault types any day.

Posted by: Pedantic Pete at June 25, 2010 8:56 AM


I agree there's no excuse for lackadaisical oversight of staff. I'm not sure that was the case in BB's situation.

From my own experience, I have dealt with incompetent staff, evil rogue staff, and imcompetently evil rogue staff. Unfortunately, all you can do is put in policies and procedures, train the staff in those policies and procedures, and expect the non-attorney management, and the attorney management (and attorney non-management) to ensure the policies and procedures are being followed by all. It's a lot to keep track of. Staff that are determined not to follow procedures, whether through incompetence or malicious intent, can do a lot of damage before they are detected.

I've often been asked by friends when I'm going to start my own firm. I tell them never. Who wants the hassle?

Posted by: pong at June 25, 2010 11:33 AM