Incorporation by reference

Started by patent710, 03-23-15 at 05:17 PM

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patent710

I have an application (App. 1) that claims the benefit of a PCT application under 371.

The specification of App. 1 has an incorporation by reference to a co-pending PCT application; specifically, the WIPO publication of that PCT application (App. 2).  There is no benefit claim in App. 1 to App.2, only the incorporation by reference language.

I received a non-final rejection and would like to amend the pending claims of App. 1 with some subject matter disclosed in the specification of App. 2.

Under 37 CFR. 1.57(c), "essential material may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference."

In view of 37 CFR. 1.57(c), can I amend the pending claims of App. 1 to recite some of the subject matter disclosed in the specification of App. 2?  And do I need to amend the specification of App. 1 to disclose the subject matter?

JimIvey

I've never done that myself, but I've heard that the answers are: yes and yes.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

NJ Patent1

Perhaps I misapprehend the OP (or CAFC authority), but I'm not quite so sanguine here.  It is my understanding that, once a PCT properly enters the national stage in the US, it is a "US application" ab initio, entitled to the benefit of (effectively filed on) the filing date of the parent PCT.  I further understand that a US patent application must "stand on its own two feet" wrt WD and enablement as of its effective filing date.  What I am not so sure of is whether some other PCT application incorporated by reference in that (first) PCT that itself later properly enters the national phase in the US then "counts" (for 37 CFR 1.57(c)) as a US patent application publication as of its PCT publication date.  Reg seems facially clear.  If the "essential matter" now sought to be incorporated was not in an issued US patent or US patent application (effective) publication on the filing date of PCT one (effective filing date of US application sought to be amended), IBR should IMO fail.  37 CFR 1.57(c) seems quite clear on its face.  What CAFC authority do I miss or misapprehend Jim? 

Patent710:  However it works out, yes, absolutely.  You must amend the written description of App 1 ipsis verbis

JimIvey

Quote from: NJ Patent1 on 03-26-15 at 12:05 AM
What CAFC authority do I miss or misapprehend Jim?

None that I'm aware of.  Like I said, I've never faced that problem myself.  However, a colleague had an incorporation by reference objected to by the examiner but was able to add the incorporated material into the application without a new matter objection.  Yeah, that's just one examiner, just one data point, but its the only one of which I'm aware.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

dbmax

#4
Hi NJ Patent1,

Here's an unrelated case that, while not dealing directly with the PCT question, may offer a tiny glimmer of sanguinity:

See Hollmer v. Harari, No. 11-1276 (Fed. Cir. June 7, 2012) http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1276.pdf

The court applied two different standards for determining the sufficiency of IBR  language, finding Harari's IBR sufficient during prosecution, but insufficient post issue (or post abandonment).

Where the reference was to a U.S. patent application which had not been published at the time of filing the referencing application, the defect could be cured prior to issue by amending the reference in the specification to insert any missing bibliographic data for the reference. The court did not separately address the period between publication and issue of the referencing app.

The CAFC ruling in the above case dealt with defects revolving around unambiguous identification of referenced material. During prosecution, it applied a "reasonable examiner" standard. I'm wondering if the same standard could be applied, even where the defect is of a different type.  Rule 57(h) (previously 57(g)), if read broadly, suggests to me that maybe it can.

1) If an incorporation by reference to a PCT application for essential matter is improper under 57(d) (formerly 57(c)), I'm wondering if the defect can be cured under 57(h). If so it seems clear that amending the spec  according to rule 57(g) to verbosely recite the text from the reference  would be required in order to pass muster after issue. That is, correct the IBR defect by losing the IBR. The time to amend the spec, it would seem, would be when amending the claims.

2) As an alternative, I've long been curious whether one could file a continuing App3 claiming priority to App1, and reciting the text of App2, where App1 incorporated App 2 by reference.  I'm wondering if the priority claim in App3 to material which had been (possibly) conceded to be "nonessential" in App1 might run into some weird combination of estoppel and noncontinuity of disclosure.   Under this scenario, if App3 is a CIP, presumably only the priority claim to App1 would be at risk.

db
(Not an Attorney)

EDIT:

PS, Here's a link to the Harari v Hollmer case, which preceded the above case, and which mentioned 37 CFR 1.57(g) and MPEP 608.01(p). http://caselaw.findlaw.com/us-federal-circuit/1522237.html

Tobmapsatonmi

Quote from: dbmax on 03-30-15 at 06:00 PM
Hi NJ Patent1,

Here's an unrelated case that, while not dealing directly with the PCT question, may offer a tiny glimmer of sanguinity:...


Well, I'd say you bloody well answered that question!   ;D
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

dbmax

#6
Quote from: Tobmapsatonmi on 03-31-15 at 03:59 AM
Well, I'd say you bloody well answered that question!

Well, maybe so, but I finally found this entry from mpep to reduce my trepidation.

Quote from: MPEP 608.01(p)(I)(A)(2)An incorporation by reference of essential material to an unpublished U.S. patent application, a foreign application or patent, or to a publication is improper under 37 CFR 1.57([d]). The improper incorporation by reference is not effective to incorporate the material unless corrected by the applicant (37 CFR 1.57([h]))......Any underlying objection or rejection (e.g., under 35 U.S.C. 112) should be made by the examiner until applicant corrects the improper incorporation by reference by submitting an amendment to amend the specification or drawings to include the material incorporated by reference. A statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter is also required. 37 CFR 1.57([g]).

Seems to speak directly to the OP.

Guess I should have read the mpep cover to cover first. Fortunately the html version is still online.

db

NJ Patent1

db, Tobma; Thx.  Have some reading to do now to make sense of this. 

NJ Patent1

db:  I did some "reading" and not sure either Horari I or Horari II "bloody well settles" the issue bcs I'm unsure what the issue bloody well really is here.  I'm still unclear of OP's question – they have not followed-up here.  I only understand that it involves PCTs or national stages thereof.  We are not talking about IBR into an app, originally filed in the US, of some other app, also originally filed in the US, on the same day, as was case in Horari? (Pub PAIR is misbehaving right now, but I find no hint of a reference to a PCT or straight Paris in the Horari '880 FH). 

I find no 35 USC section on point (?).  As I read 37 CFR 1.57(a) wrt a foreign app, it only addresses inadvertently omitted matter.  Was "essential matter" for 112 at filing "inadvertently omitted" by OP?  Is that OP's case, or just oh s**t I screwed-up?  Was the "source" document "present on the filing date" of the US app, (which I construe to be entry not commencement for a 371), as the '579 was in Horari?  N.b.  OP admits no benefit claim (no x-reference, no 1.55 or 1.78 claim).  AFIK present 35 USC is silent on IBR.  So I go down the food chain to CFR.  I have long-since forgotten 37 CFR as it stood in 2004 (can't even remember where I left my car keys, and I don't own a car!).  Present 37 CFR 1.57(c) still seems fairly clear to me, IMO the only debate being what constitutes a "U.S. patent or U.S. patent application publication" in 37 CFR 1.57(c).  A CAFC decision of course trumps CFR.  But after one reading, appears to me that Horari dealt with the narrow question of whether the appropriate IBR language was used to alert the Examiner or PHOSITA , not the effect of "proper" language, if as in Horari source app was "present' on effective filing date (what does it mean to be present?).  Are you of different view db?

Now, at this hour in NYC, this is interesting.  Since I find no express reference to IBR in 35 USC (do I err?), one stroke of a CAFC panel's pen (or, better, SCOTUS') and IBR is gone as irreconcilable with 35 USC 112.  Another deserved bench-slap from SCOTUS to CAFC and reminder that life of patent solicitor is a difficult one, and that an applicant must "man or woman up" and disclose as of effective filing date? 

Jim_Demers

Came across this thread while researching the topic.  There's additional explanation at MPEP 211.02:

  • For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet (37 CFR 1.76(a)) and/or in the specification (preferably appearing as the first sentence(s) of the specification following the title). If applicant is claiming the benefit of multiple prior applications, and the reference to the prior applications is in the specification, the reference may be in a continuous string of multiple sentences at the beginning of the specification. The multiple sentences must begin as the first sentence after the title, and any additional sentence(s) including a benefit claim must follow the first sentence and not be separated from the first sentence by any other sentence not making a benefit claim. If the specific reference is only contained in the application data sheet, then the benefit claim information will be included on the front page of any patent or patent application publication, but will not be included in the first sentence(s) of the specification.

    For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 119(e) or 120 and 37 CFR 1.78 for benefit of a prior-filed provisional application, nonprovisional application, or international application designating the United States that was present on the filing date of the continuation or divisional application, or the nonprovisional application claiming benefit of a prior-filed provisional application, is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP §201.06 and 201.17. However, applicants are encouraged to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 119(e) or 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(a). See 37 CFR 1.57(b). Se MPEP §§ 201.17 and 608.01(p).

    When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. An incorporation by reference statement added after an application's filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

    See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(a).
    If an applicant includes a benefit claim in the application but not in the manner specified by 37 CFR 1.78 (e.g., if the claim is included in an oath or declaration or the application transmittal letter) within the time period set forth in 37 CFR 1.78, the Office will not require a petition under 37 CFR 1.78 and the surcharge under 37 CFR 1.17(t) to correct the claim if the information concerning the claim was recognized by the Office as shown by its inclusion on the filing receipt.

Seems that you're limited to material "inadvertently" omitted. 



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