Is it copending if you filed it on the day the parent issued?

[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?

11 Replies to “Is it copending if you filed it on the day the parent issued?”

  1. Interesting to note that MPEP 211.01(b) uses the language “on the SAME DATE … that the patent issues” (emphasis added). To quote in full from :

    >>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.

  2. The MPEP has said that filing on the date of issue is sufficient for co-pendency since I took the patent bar, which has been 20+ years. And last I checked, the Patent Office has not taken “clock time” into consideration when looking at due dates, public use issues, or interferences. They only look at the date, not the time.

    A disconcerting opinion, despite the fact that I generally file continuations at least a few days before issue.

    There is another District Court opinion which supports filing on the same date as being adequate for copendency: ULTRATEC, INC. v. SORENSON COMMUNICATIONS, INC., Dist. Court, WD Wisconsin 2014

    Now that there is disagreement in district courts, hopefully someone will appeal this issue to the Federal Circuit, so the rule will be nailed down.

  3. Perhaps I am naive, but for the life of me, I do not understand why there is an advantage to waiting until the last minute to file daughter applications. I file the daughter applications before I pay the issue fee. I tell the clients that they have to be ready to do both at the same time. Even if you pay the issue fee without filing the daughter application, the two weeks notice prior to issuance tells you what your deadline is. Why wait until the last minute? Or is it client indecisiveness driving this?

    1. If the client instructions come in on the last day, then the last day is the day the continuation or divisional application gets filed.

      And there is many a case where even on the last day, the client has not managed to give a straight “yes or no” as to whether to file that continuation or divisional application. In which case not only will the filing of the continuation or divisional application happen on the last day, but the government fee will not be paid that day. The government fee will be paid only some weeks later when the client finally makes up its mind to proceed.

    2. I envy you your decisive clients. I have clients hesitating until the due date, despite repeated reminders. I have filed more than one no-fee Monday continuation for cases that were issuing on Tuesday because the client just couldn’t get around to making a decision.

  4. Ha! It appears that the Court gives the patent owner two options: show that your continuation was filed before 12:00:01 AM (not 12:01 AM) or show that the patent actually issues later in the day, and that your continuation was on file before that issue date.

  5. The Federal Court of Appeals for the Federal Circuit is hearing an appeal for this issue. Briefs have been filed and oral arguments are currently scheduled for May 6, 2016.

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