Procrastinating patent prosecution attorneys took notice when Delaware District Court Judge Richard G. Andrews threw out the longstanding accepted practice that a continuation application may be filed on the issue date of a priority application. The summary judgment ruling invalidated three Immersion Corp. touchscreen patents asserted against smartphone manufacturer HTC Corp. on the basis of an invalid chain of priority. Immersion Corp. v. HTC Corp. is now on appeal with the Federal Circuit and has the potential to invalidate thousands more patents.

At issue is whether the United States Patent and Trademark Office (USPTO) has the authority under Section 120 of the Patent Act to accept a priority claim in a continuation application filed on the issue date of a priority application. In particular, Section 120 requires the USPTO to accept a priority claim to a prior application so long as the application was filed before (1) the patenting, (2) abandonment of or (3) termination of proceedings on the prior application.

The debate between the parties focused on whether a continuation application filed on the issue date of a priority application was filed before the patenting of the priority application. Likely this debate arises out of the USPTO’s interpretation of Section 120, in that the USPTO reads “before” as “not later than.” As Judge Andrews found, such an interpretation is contradicted by the ordinary meaning of “before.” In view of the arguments made on appeal, there appears to be little reason for the Federal Circuit to disagree.

However, Section 120 also authorizes priority claims filed before the termination of proceedings of a priority application. The proceedings of a patent application could be considered to continue through its issue date, such that the USPTO is authorized by Section 120 to accept a continuation application on the issue date of a priority application. This issue was not raised by any party to the proceedings, and with oral arguments heard on May 5, 2016, this reasonable interpretation of the Patent Act is likely to escape the decisionmakers.

In support of an inclusive interpretation of the term “proceedings,” Section 2 of the Patent Act uses the term broadly when it gives the USPTO the authority to, “establish regulations, not inconsistent with law, which, — (A) shall govern the conduct of proceedings in the Office …” While overlooked by the USPTO, this plain-language of the Patent Act, requires that “proceedings” include the very pendency of a patent application. ¹ With its broad regulation authority, the USPTO can determine that termination of proceedings occurs following the issue date. Such a determination would allow continuation applications to be filed on the same day the priority application issues.

While the USPTO may not have asserted the most reasonable basis for its authority, the Federal Circuit is not precluded from finding that the Patent Act authorizes the USPTO to accept priority claims in applications filed on the issue date of priority applications. Such a finding would not only be consistent with the plain meaning of the Patent Act, but also provide a practical solution to an otherwise unnecessarily difficult contest between the plain language of Section 120 and the due process rights of affected patent owners.

Procrastinating patent prosecution attorneys and the owners of an estimated 30,000 United States patents at stake hope the Federal Circuit agrees.

¹ In stating that proceedings are terminated within the meaning of Section 120, inter alia, for failure to pay an issue fee, the USPTO implicitly acknowledges that proceedings within the meaning of Section 120 include general patent prosecution proceedings, not only court proceedings or proceedings before the Patent Trial and Appeal Board.