By: AJ Zucchero
In order for a continuation application to properly claim benefit of a parent application’s earlier filing date, 35 U.S.C. § 120 requires that the continuation application be “filed before the patenting or abandonment of or termination of proceedings on” the parent application. The USPTO has long maintained that this requirement is satisfied when a continuation application filed on the same day that the parent application issues as a patent. However, the USPTO’s interpretation was recently called into question when a Delaware district court held that a patent application filed on the same day that its parent application issued was not “filed before the patenting” of the parent application within the meaning of 35 U.S.C. § 120.
In Immersion Corp. v. HTC Corp., the Federal Circuit reversed the Delaware district court’s finding, and held that a continuation application can properly claim benefit of a parent application’s earlier filing date when the continuation application is filed on the same day that the parent application issues. The Federal Circuit’s decision is certainly welcome news for the owners of the estimated ten thousand patents whose priority claims were called into question by the Delaware district court’s decision. However, it is likely best practice to continue to file continuation applications at least a day prior to issuance of the parent whenever possible, at least until it is clear that the Federal Circuit’s decision will stand.
For further information, please contact:
AJ Zucchero – 678-869-7745 – firstname.lastname@example.org