[As noted in the comments below, the Court of Appeals for the Federal Circuit reversed. Same-day filers are safe.]
I’ve always assumed that if I manage to get my continuation or divisional application filed on the very day that the parent application issues, that’s good enough. The domestic benefit under 35 USC § 120 will work. Right?
Alert reader David Berry drew my attention to a February 11, 2015 ruling by Judge Richard G. Andrews in the U.S. District Court for the District of Delaware in a summary judgment motion in the case of Immersion Corp. v. HTC Corp. civil action 12-259. The ruling suggests that when the USPTO grants a patent, it does so at about 12:01 AM on the Tuesday, and that a would-be continuation or divisional application filed after 12:01 AM on that Tuesday would lack copendency under 35 USC § 120.
Here’s Judge Andrews’ opinion. Judge Andrews leaves open the possibility that the patent owner might be able to prove that it filed its continuation application in that split second between midnight and 12:01 AM. But I’d guess the patent owner will not be able to prove such a thing.
I have to sort of assume that if this decision were appealed to the Federal Circuit, there is some chance the Federal Circuit would reverse. But between now and then, I suppose the practitioner who wants to be on the safe side will file any continuation or divisional by the Monday before the Tuesday issuance. And what if this case settles, as so many District Court cases do? Then there might not be any predictable path to appellate review.
The law firm that presented this argument on behalf of HTC that it’s not really a continuation or divisional if it is filed on the day the parent application issues … it is the firm of Perkins Coie. I did a quick search and Perkins Coie is listed on the front page of about 7800 granted US patents. I wonder if any of those patents were granted on an application filed by Perkins Coie as a continuation or a divisional on the day that a parent application issued?
What do you think? Does Judge Andrews’ opinion, at a stroke, invalidate lots of patents?