| Untitled Document |
The terms: "filing date" and "priority date" are often incorrectly used interchangeably, but they are not the same. The filing date is the date when a patent application is first filed at a patent office. The priority date, sometimes called the “effective filing date”, is the date used to establish the novelty and/or obviousness of a particular invention relative to other art.
The priority date may be earlier than the actual filing date of an application. If an application claims priority to an earlier parent application, then its priority date may be the same as the parent.
There are a number of situations where a patent application may claim priority to an earlier application. These include:
*Continuation applications (including continuations, divisionals, and CIPs). A patent application may claim priority to an earlier filed parent application. When this occurs, the priority date of the new application is usually the same as the priority date of the parent application.
*Domestic applications based on foreign or international filings. If a patent application is first filed in a foreign country, or as an international (PCT) application, and then filed domestically (usually within a year the foreign or international filing), then the application that is filed domestically may claim the filing date of the application in the foreign country as its priority date.
*Patent filings based on US provisional patent applications. In the US, an applicant may file a provisional patent application, and then file a full-length application within one year. In this case, the priority date for the full-length application is the date of the provisional application filing.
In many cases, a patent application 'claims priority' to one or a series of applications. For example, a continuation application may claim priority to a parent utility application, which further claims priority to a US provisional application. A new application may then claim priority to the first filed application in the series, which in this case is the provisional application.
If a patent application is an original, non-provisional patent application and not a continuation application, and not previously filed in another country, its filing date is usually the same as its priority date.
Certain U.S. patentability rules are related to the filing date of the U.S. patent application. The term "filing date" refers to the effective filing date of the earliest U.S. patent application filed by the inventor(s) containing a disclosure that supports the claimed invention. The application in which the invention is disclosed must meet the requirements for being either (1) a "first" filing, (2) an earlier-filed, related "parent" application of a later-filed continuing (continuation or continuation-in-part) application in which the invention is claimed (35 U.S.C. 120), (3) an earlier-filed, related "parent" application of a later-filed divisional application in which the invention is claimed, (4) an earlier-filed provisional application that establishes an earlier "priority date" for the later-filed application in which the invention is claimed or (5) an earlier-filed international (PCT) application that designates the U.S. (35 U.S.C. 363). A "first" filing is the first application to adequately describe a particular invention and to disclose "how to make" and "how to use" at least the best mode of the invention that also claims that invention (35 U.S.C. 112). A "parent" application is an earlier-filed, copending patent application of an inventor that describes and discloses a given invention.
The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):
MPEP 706.02 - Rejection on Prior Art
MPEP 201 - Types of Applications
MPEP 201.11 - Continuity between Applications: When Entitled to Filing Date
MPEP 201.04 - Parent Application
MPEP 506 - Completeness of Original Application
MPEP 201.04(b) - Provisional Application
MPEP 201.06 - Divisional Application
MPEP 201.07 - Continuation Application
MPEP 201.08 - Continuation-in-Part Application
MPEP 1893.03(b) - The Filing Date of a U.S. National Stage Application
MPEP 2161 - Three Separate Requirements for Specification Under 35 U.S.C. 112, First Paragraph
An important case study on Effective Filing Date is reproduced here from The Patent Prospector.
Technology Licensing (TLC) went after Gennum for infringing a family of patents going to video synchronization. The most interesting facet of this case pivoted on patent priority date. With a continuation-in-part (CIP), a claim is entitled to the effective filing date of an application that provides written description support for the claim. The effective filing date becomes an issue when invalidating prior art exists between the initial parent filing date and the filing date of a later CIP. Plus, other songs in this dance hall: "Beast of Burdens of Proof," "Cutting a Bitch on Rule 56," and "Reaching to Delve With a Thin 112."
Technology Licensing (TLC) v. Videotek and Gennum (CAFC 2007-1441)
In a footnote, the CAFC expressed squeamishness about using the term "priority" date.
"Priority" is a term which, like "jurisdiction," has many meanings and which depends for its meaning on context. The term is sometimes used, as here, when a patent application is entitled to the benefit of the filing date of an earlier United States patent application. The statute that provides for that entitlement is 35 U.S.C. § 120, which does not use the term "priority." The term does appear in 35 U.S.C. § 119, which provides that an application is entitled to the benefit of the filing date of an earlier foreign application, subject to certain limitations and conditions. And, of course, the term is commonly used in connection with interference practice. For clarity, we refer not to a priority date but to entitlement to the benefit of a filing date, or simply the effective filing date.
No shyness here. Priority date, you know what I'm talking about, depends on a claim's support in the specification.
[A] patent must contain a written description of the claimed invention in "full, clear, concise, and exact" terms. 35 U.S.C. § 112, ¶ 1. In a situation like the one here, in which a patentee seeks the benefit of the filing date of an earlier filed application, compliance with the written description requirement may turn on whether the disclosure of the earlier application provides "adequate support" for the claims at issue. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991).
[U]nder 35 U.S.C. § 120,... a patent application for an "invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application . . . ." 35 U.S.C. § 120 (emphasis added). In essence, this means that in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶1, including the written description requirement, with respect to that claim. See Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed. Cir. 1994).
The trial court had invalidated an asserted claim, 33, in light of prior art that fell between the earliest filing date (1992) and the date of a later CIP (1995). On appeal were two issues: burden of proof to show effective filing date, and not granting the original (earliest) filing date, thus invalidating the patent over cited prior art, Elantec.
Burdens of Proof
The CAFC delineated the burdens of proof. There is no shift in a burden of proof - "the risk of decisional uncertainty stays on the proponent of the proposition."
First, a clarification of terminology. We will refer to the generic problem of burdens only in the plural--burdens of proof--because there are within that phrase two distinct, and quite different, ideas. One is the burden of persuasion. That is the ultimate burden assigned to a party who must prove something to a specified degree of certainty--beyond a reasonable doubt (the criminal law standard of proof for guilt); by a preponderance of the evidence (the usual civil law standard for proof of a fact); or, perhaps, something in between, such as "clear and convincing," the patent law evidentiary standard for establishing that a patent, otherwise presumed valid, is invalid, see 35 U.S.C. § 282; Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984). Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point--thus, if the fact trier of the issue is left uncertain, the party with the burden loses. See generally Christopher B. Mueller & Laird C. Kirkpatrick, Evidence § 3.1 (1995); Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice & Procedure § 5122 (2d ed. 2005).
In the case before us, plaintiff/patentee TLC, alleging infringement by Gennum, has the burden of persuasion that Gennum infringes, under the usual civil law standard of preponderance of the evidence. In response to the argument by TLC that Gennum infringes claim 33 of the '250 patent, Gennum raises the affirmative defense that claim 33 is invalid because it is anticipated by the prior art. When an alleged infringer attacks the validity of an issued patent, our well-established law places the burden of persuasion on the attacker to prove invalidity by clear and convincing evidence. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed. Cir. 1986); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1573 (Fed. Cir. 1985); Am. Hoist, 725 F.2d at 1360. Neither TLC's burden to prove infringement nor Gennum's burden to prove invalidity, both ultimate burdens of persuasion, ever shifts to the other party--the risk of decisional uncertainty stays on the proponent of the proposition. See Hybritech, 802 F.2d at 1375; Ralston, 772 F.2d at 1574; Am. Hoist, 725 F.2d at 1360.
The ping-pong burden is "the burden of production."
A quite different burden is that of going forward with evidence--sometimes referred to as the burden of production--a shifting burden the allocation of which depends on where in the process of trial the issue arises. See generally Christopher B. Mueller & Laird C. Kirkpatrick, Evidence §§ 3.1, 3.2 (1995); Charles Alan Wright & Kenneth W. Graham, Jr., Federal Practice & Procedure § 5122 (2d ed. 2005). We understand, and we shall use here, the phrase 'going forward with evidence' to mean both producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record, as the case may require.
So, TLC meeting "the initial burden of going forward with evidence to support its allegation that Gennum infringes" follows with Gennum meeting "the burden of going forward with evidence that there is... anticipating prior art" to meet its "ultimate burden of proving its defense of invalidity based on anticipating prior art."
At that point TLC has the burden of going forward with evidence either that the prior art does not actually anticipate, or, as was attempted in this case, that it is not prior art because the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art. See id. This requires TLC to show not only the existence of the earlier application, but why the written description in the earlier application supports the claim. In the context of the allegedly anticipating Elantec prior art, that means producing sufficient evidence and argument to show that an ancestor to the '250 patent, with a filing date prior to the Elantec date, contains a written description that supports all the limitations of claim 33, the claim being asserted.
Assuming then that TLC's evidence and argument in support of the earlier filing date is now before the court, the burden of going forward again shifts to the proponent of the invalidity defense, Gennum, to convince the court that TLC is not entitled to the benefit of the earlier filing date. "Convince" is the operative word, because if the court is not persuaded by clear and convincing evidence that Gennum is correct, Gennum has failed to carry its ultimate burden of persuasion, and its defense of invalidity, based on anticipation by the Elantec art, fails.
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) caused some consternation on this score. The CAFC brushed it aside.
As we noted earlier, it is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed.
Obviously, the PTO had granted the patents, and over Elantec as cited art. That too was easily swept aside.
It is self-evident that the PTO's subsequent reaffirmation of its earlier position, that claim 33 is a valid claim despite the alleged prior art, can have no legal effect as such on the already-rendered judgment of a court of competent jurisdiction. No one suggests that the PTO has power to exercise review authority over a judgment of a federal trial court.
Then a gentle application of salve to the USPTO.
This is not to say that the determinations made by the corps of examiners are not important, or should not be worthy of appropriate deference to their expertise in these technical matters, especially when we have the benefit of well-reasoned explications. It is to say that when dealing with the intangible worth to be accorded an administrative agency's decision making, the judicial process cannot be held hostage to the timing of either the agency or the litigants who have invoked the agency's further review. In some circumstances a party may be able to obtain a stay from the trial court while awaiting the sought-for agency action; absent that, and absent extenuating circumstances not here present, the case must be decided on the record the litigants present for appeal.
Written Description Determination
To satisfy the written description requirement, the disclosure of the earlier filed application must describe the later claimed invention "in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). While the earlier application need not describe the claimed subject matter in precisely the same terms as found in the claims at issue, Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995), the prior application must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention," Vas-Cath, 935 F.2d at 1563-64. Compliance with the written description requirement is a question of fact, which, following a bench trial, we review for clear error. Lampi Corp. v. Am. Power Prods., Inc., 228 F.3d 1365, 1378 (Fed. Cir. 2000).
The claim element of contention was support for the claimed "other circuit."
[T]he issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the '250 patent, that the inventor had possession of the claimed "other circuit" in 1992 when the '323 application was filed.
Thus, although he found support for the capacitor in the original written description, the only support that the inventor acknowledged for the "other circuit" was the new matter added in 1995.
Failure to cite known prior art is inequitable conduct only if it is not cumulative, i.e., redundant to what was otherwise cited.
In some of our cases we have looked to the current PTO rule on the duty of disclosure for a definition of materiality. See Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1129 (Fed. Cir. 2006); Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs., Ltd., 394 F.3d 1348, 1352 (Fed. Cir. 2005). That rule, which became effective in 1992, explicitly provides that an undisclosed reference is not material when it is cumulative to information already of record in the patent application. 37 C.F.R. § 1.56 ("[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application . . . ."). We have recently held that the materiality standard based on PTO Rule 56 did not replace, but merely supplemented, the pre-1992 standard established by this court. Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1316 (Fed. Cir. 2006). Under that standard, which was based on an earlier version of Rule 56, a reference is material "when a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Star Scientific, 537 F.3d at 1367 (quoting Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1297 (Fed. Cir. 2008)); see also Digital Control, 437 F.3d at 1314. Even under the "reasonable examiner" test, however, it has long been established that a reference is not material if it is cumulative to other references already before the examiner. Star Scientific, 537 F.3d at 1367; Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1582 (Fed. Cir. 1991); Halliburton Co. v. Schlumberger Tech. Corp., 925 F.2d 1435, 1440 (Fed. Cir. 1991).
The inequitable conduct charge didn't stick.
Gennum had charged "failure to satisfy the written description and enablement requirements of 35 U.S.C. § 112, ¶ 1, and indefiniteness under 35 U.S.C. § 112, ¶ 2" on another claim.
The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953 (Fed. Cir. 2007) (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003)).
The CAFC let stand the validity finding, because one skilled in the art could have filled the disclosure omission.
In this case, the parties agree that video standard detector 103 in Figure 1 of the '869 patent corresponds to limitation (a) of claim 31. That circuit element is shown as a "black box," i.e., nothing in the figures or text of the written description describes the details of its inner circuitry. As our cases demonstrate, however, the absence of internal circuitry in the written description does not automatically render the claim indefinite. In Intel, 319 F.3d at 1366, for example, we held that generic "core logic" of a computer modified to perform a particular program was adequate corresponding structure for a claimed function although there was no specific circuitry disclosed to show how the core logic was modified. Similarly, in S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1370-71 (Fed. Cir. 2001), we held that a "selector" adequately disclosed structure for a "means . . . for selectively receiving" limitation even though neither the electronic structure of the selector nor the details of its operation were described. In that case, it was unnecessary for the written description to disclose additional detail because a person skilled in the art would have recognized that the selector as shown in the patent was an electronic device with a known structure. Id.
Affirmed. TLC, tone deaf and out of sync, lost the case.