Disclosure Must Be the Same in a Continuation Application

"Many patent practitioners are not fully aware of the implications of subsequent applications, either for prosecution or for litigation."

Patent practitioners (hopefully) know that there are many types of patent applications and, at times, have filed a continuation, continuation-in-part, or divisional application. "Continuation practice" was the once commonly used phrase to describe subsequent U.S. patent applications, which also used to include file wrapper continuations (FWC), now replaced by the more modern request for continued examination (RCE). These types of subsequent patent applications can be used strategically to build a portfolio of patents for a client for a given subject matter. See, e.g., the patents asserted in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ___, 138 S.Ct. 2129 (2018). However, many patent practitioners are not fully aware of the implications of each such subsequent application, either for prosecution or for litigation. This five-part series will review these types of applications and their implications and ultimately provide some relevant practice tips.

The Law

The filing of continuation, continuation-in-part, and divisional applications is limited by the co-pendency requirement of 35 U.S.C. § 120: each subsequent application cannot be filed after the issuance, expiration, or abandonment of the parent application from which it immediately depends. After issuance, for example, an applicant can only seek to add claims by filing a reissue application. 35 U.S.C. § 251. This piece will not address reissue applications, reexamination requests, post-grant proceedings, or requests for continuing examination (RCE).

A patent application may have its origins in one or more earlier filed applications. An applicant may file a continuation, divisional, or continuation-in-part (CIP) application of a prior application, all of which the U.S. Patent and Trademark Office ("USPTO") characterizes as "continuing" applications. See MPEP § 201.11. The USPTO has also noted that the expressions "continuation," "divisional," and "continuation-in-part" are merely terms used for administrative convenience. See MPEP § 201.11; Transco Products Inc. v. Performance Contracting, Inc., 38 F. 3d 551,555 (Fed. Cir. 1994). In general, a continuing application is one filed during the pendency of another application which contains at least part of the disclosure of the other application and names at least one inventor in common with that application.

As discussed more fully herein, "continuation" and "divisional" applications are alike in that they are both continuing applications based on the same disclosure as an earlier application, without more. They differ, however, in what they claim. A "continuation" application comprises claims directed to the same invention claimed in an earlier application, although there may be some variation in the scope of the subject matter claimed. See MPEP § 201.07. A "divisional" application, on the other hand, is one carved out of an earlier application which disclosed and claimed more than one independent invention, the result being that the divisional application claims only one or more, but not all, of the non-claimed independent inventions of the earlier application. See MPEP § 201.06. A "CIP" application is a continuing application comprising all or a portion of the disclosure of an earlier application together with newly added matter not present in that earlier application. See MPEP § 201.08.4 The term "parent" is often used to refer to the immediately preceding application from which a continuing application claims priority; the term "original" is used to refer to the first application in a chain of continuing applications. See MPEP §§ 201.04, 201.04(a).

For these subsequent applications, U.S. Patent Law (unless noted otherwise, the "U.S. Patent Law" cited herein is the America Invents Act (AIA), implemented September 16, 2012, and applicable to all applications filed after March 16, 2013) requires that the subsequent (or "child") patent application "contain a specific reference to [each] earlier filed application" to which it purports to claim priority. 35 U.S.C. § 120 (§120 became statutory law in 1952 and has its origins in patent office practice and case law – see Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418, 1421 (Fed. Cir. 1989)). For example, the Supreme Court, long ago, explained that under §120, parent and continuing applications "are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law." Godfrey v. Eames, 68 U.S. 317, 326, 1 Wall. 317 (1863). Note, however, that these cases dealt only with the issue of priority, and not with USPTO procedure for examining a continuation application in light of its parent. For a specific reference to have effect, U.S. Patent Law provides that the application must be co-pending with one or more of the earlier-filed application(s), e.g. the first application of the family or one or more later-filed applications "similarly entitled" to the benefit of the first application's filing date. 35 U.S.C. § 119 Although most commonly cited for non-provisional patent applications, 35 U.S.C. § 119(e)(1) recites parallel requirements to claim priority from an earlier-filed U.S. provisional application, stating "[n]o application shall be entitled to the benefit of an earlier filed provisional application … unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director." However, as provisional patent applications cannot themselves be continuation, continuation-in-part, or divisional applications, this blog will not address provisional patent applications.

Understanding the Hierarchy

The authors note that in the hierarchy of binding authority, first there is the U.S. Constitution, followed by statutory laws such as the AIA (35 U.S.C. § 101 et seq.), and then case law interpreting and applying that law – these are primary, binding authorities. The regulations found in the U.S. Code of Federal Regulations (CFR) are considered as legally binding as any Federal Statute only if the given rule or regulation therein is a "reasonable interpretation" of the specific statute(s) enabling that rule or regulation (this is known as the "Reasonable Interpretation" rule). Along these lines, the AIA authorizes the USPTO to promulgate regulations governing the administration of certain proceedings, see, e.g., 35 U.S.C. § 316(a) (governing inter partes review under this chapter), and the Federal Circuit generally holds that "where a statute leaves a 'gap' or is 'ambigu[ous],' we typically interpret it as granting the agency leeway to enact rules that are reasonable in light of the text, nature, and purpose of the statute." Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131,2142 (2016) (quoting United States v. Mead Corp., 533 U.S. 218, 229 (2001)). When the Board issues such rules, the Federal Circuit "accept[s] the Board's interpretation of [them] unless that interpretation is 'plainly erroneous or inconsistent with the regulation.'" In re Sullivan, 362 F.3d 1324, 1326 (Fed. Cir. 2004) (quoting Eli Lilly Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003)). On the other hand, "[t]he MPEP and Guidelines are not binding on court[s]" but they "may be given judicial notice to the extent they do not conflict with the statute." In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005). The authors therefore cite to the MPEP in this article as infrequently as we can.

The USPTO issued 37 C.F.R. § 1.78, which implements these statutes and requires that an application contain a specific reference to each prior-filed application to which the application seeks to claim priority. Specifically, §1.78 provides that the application claiming the benefit of one or more prior-filed, co-pending non-provisional applications must include "a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number)" and indicating "the relationship of the applications (i.e., whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application or international application)." 37 C.F.R. § 1.78(d)(3) (2009). Note that all the prior applications need not be co-pending. It further states that the reference "must be included in an application data sheet …, or the specification must contain or be amended to contain such reference in the first sentence(s) following the title." Droplets, Inc. v. E* Trade Bank, 887 F.3d 1309,1316 (Fed. Cir. 2018). Consistent with 35 U.S.C. § 120 and 37 C.F.R. § 1.78, the MPEP provides detailed guidance on how to claim priority from multiple prior-filed applications. It states that "[t]he reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications." MPEP § 201.11 III.C.[3]

Chain of Priority

The Federal Circuit has noted that a patentee is the person best suited to understand the genealogy and relationship of her applications and, therefore, that a requirement for her to clearly disclose this information should present no hardship. Medtronic CoreValve v. Edwards Lifesciences Corp., 741 F. 3d 1359,1366 (Fed.Cir. 2014). However, although such a chain of priority should be specified upon filing the subsequent application, subsequently amending an application to change its relationship to a prior-filed application — for example, from a CIP application to a divisional application — is expressly permitted. In re Janssen Biotech, Inc., 880 F. 3d 1315,1324 (Fed.Cir. 2018), citing 37 C.F.R. § 1.78(d)(2) (2015) (providing that the specification must "contain or be amended to contain a reference to each such prior-filed application" and that "reference also must identify the relationship of the applications") (emphasis added); see also MPEP § 211.03 (permitting the correction of "a timely submitted benefit claim" by "[c]hanging the relationship of the applications (e.g., changing … from 'continuation-in-part' to 'continuation' or 'divisional')").

Language Matters

One further note: the Federal Circuit has used and interpreted the phrase "this application" in the self-referential sense to mean the "present application." See, e.g., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1360-61 (Fed.Cir.2012) (Newman, J., concurring-in-part and dissenting-in-part) (noting that the patent application properly claimed priority under § 120 when it disclosed all prior applications with "no break in the chain of priority" and concluded with, "This application claims priority to all such previous applications…."); Broadcast Innovation, L.L.C. v. Charter Commc'ns, Inc., 420 F.3d 1364, 1366 (Fed. Cir. 2005) (interpreting "[t]his application is a divisional" to set forth the priority chain of the present application); Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1383 (Fed.Cir.2007) (interpreting "[t]his application is a continuation of" to set forth the chain of co-pending applications from the present application). Nonetheless, "present application" is a phrase that should be used lightly, if at all, given that it can be applied to an application or issued patent to create disclaimers and estoppel. See "Avoiding the Present (Invention)," Patent, Trademark and Copyright Journal (BNA), February 17, 2006.

In Part II of this series, we will review the different types of subsequent applications.

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