Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[patentatt]

Does it matter, later in litigation, if an applicant properly claims priority to a foreign application?

Consider two possibilities:

A. the applicant fails to properly claim priority during litigation.  He never needs to rely on priority to overcome an applied reference, so he receives a notice of allowance and patent.
B. the applicant ensures that the PTO receives the foreign priority document, acknowledges priority, and lists the priority claim on the face of the patent.  the applicant does this, even though it's not necessary to overcome any art applied at the PTO.

Suppose both A and B are involved in similar litigations.  In both cases, a new prior art reference is found.  The reference is published after the foreign priority date, but before the filing date.

Are A and B equally protected against this new reference during litigation?  Or is B in a better position, because he got the PTO to acknowledge priority?

[Isaac]

A. the applicant fails to properly claim priority during litigation.  He never needs to rely on priority to overcome an applied reference, so he receives a notice of allowance and patent.

I assume that you meant to say that the applicant fails to properly claim priority during prosecution.

According to the PTO, failure to claim priority in a timely fashion waives your right to claim priority.   I believe that the failure is fixable even after the patent issues, but if it is not fixed, then the applicant is in a lousy position to defend against the new reference.

[patentatt]

I assume that you meant to say that the applicant fails to properly claim priority during prosecution.

Yes, that's what I meant.

According to the PTO, failure to claim priority in a timely fashion waives your right to claim priority.   I believe that the failure is fixable even after the patent issues, but if it is not fixed, then the applicant is in a lousy position to defend against the new reference.

I don't understand this.

As far as I can tell, the PTO regulations about 35 USC 119 refer to the applicant's ability to use priority during examination.  I don't understand how the applicant's failure to satisfy those regulations during examination can affect the patentee's right during litigation.

Can you give me an explicit example of how this would play out in court?  What would the defendant/infringer say exactly?

Suppose, for example, that an intervening reference (published after the priority date but before the US filing date) is discovered during litigation.

How would the defendant use it?  Couldn't the patentee just introduce evidence about priority and effectively claim it (or argue it) during litigation?

You say that the "according to the PTO" the applicant has waived priority... who cares what the PTO thinks?  The PTO is not a party to the litigation...

[NJ Patent1]

"As far as I can tell, the PTO regulations about 35 USC 119 refer to the applicant's ability to use priority during examination"

Patentatt:  I don't read it exactly that way.  35 USC is binding on DC's too, and sec 119 gives some "discretion" to the Director in setting requirements for perfecting a priority claim.  What might I say an behalf of my infringement defendant?  "Under the statute and implementing regs, the patent has an earliest effective filing date of mm/dd/yy (later than non-perfected prioruty date).  I blindly accept Isaac's statement that priority can be "fixed" post-issue and I can't cite authority that litigation is "too late".  However, IMO it flunks the smell test and I could see a DC saying that you didn't care about it then (prosecution), you can't raise it now.  Note that this is different than raising 112(f), which I have seen raised in litigation. 

[patentatt]

"As far as I can tell, the PTO regulations about 35 USC 119 refer to the applicant's ability to use priority during examination"

Patentatt:  I don't read it exactly that way.  35 USC is binding on DC's too, and sec 119 gives some "discretion" to the Director in setting requirements for perfecting a priority claim.  What might I say an behalf of my infringement defendant?  "Under the statute and implementing regs, the patent has an earliest effective filing date of mm/dd/yy (later than non-perfected prioruty date).  I blindly accept Isaac's statement that priority can be "fixed" post-issue and I can't cite authority that litigation is "too late".  However, IMO it flunks the smell test and I could see a DC saying that you didn't care about it then (prosecution), you can't raise it now.  Note that this is different than raising 112(f), which I have seen raised in litigation. 

I've thought about it a lot, and talked with some experts.

I think the difference is that, if you properly claim priority, then you establish constructive reduction to practice as of the foreign filing date.  If you don't follow 119, then even if you foreign filed earlier, it does not count as a constructive reduction to practice, and you will need to prove the earlier date through conception plus diligence or RTP.  In most cases, patentees won't be able to prove the latter.

[Isaac]

I blindly accept Isaac's statement that priority can be "fixed" post-issue and I can't cite authority that litigation is "too late".  However, IMO it flunks the smell test and I could see a DC saying that you didn't care about it then (prosecution), you can't raise it now.  Note that this is different than raising 112(f), which I have seen raised in litigation. 

Just to be clear, you would fix priority post-issue using proceedings in the patent office.  You cannot simply get the court to do it for you.