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`§ 15:5.Overview—Effective filing date, 2 IP Litigation Guide: Patents & Trade Secrets...
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`2 IP Litigation Guide: Patents & Trade Secrets § 15:5
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`Intellectual Property Litigation Guide: Patents and Trade Secrets
`Database updated October 2013
`Gregory E. Upchurch
`Chapter 15. Validity and Enforceability
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`References
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`§ 15:5. Overview—Effective filing date
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`Treatises and Practice Aids
`Lipscomb, Walker on Patents (3d ed.), Utility, Ch 5, Lipscomb, Walker on Patents (3d ed.), Patent Office Procedures,
`Ch 12, Lipscomb, Walker on Patents (3d ed.), Defenses, Ch 26
`Patent Law Fundamentals, Litigation: The Enforcement of Patent Rights, Ch 17
`Forms
`Kramer and Brufsky, Patent Law Practice Forms, Litigation, Pleadings and Motions, Pt II
`
`In determining validity, the issue of what constitutes prior art against the patent in suit often arises (under both 35 U.S.C.A.
`§§ 101 and 103, discussed in §§ 15:9 to 15:23 and 15:24 to 15:32). This, in turn, frequently depends upon the filing date of
`the patent in suit. The filing date of a patent for purposes of determining what constitutes prior art is not always the date on
`which the particular application from which the patent issued was filed. Different claims in a patent can even be entitled to
`different effective filing dates, depending upon the circumstances. 1 For example, in the case of a patent which issued from a
`CIP (continuation-in-part) application, 2 claims adequately disclosed in the parent application are entitled to the filing date of
`the parent application. 3 Claims are also entitled to the earlier filing date if their subject matter was inherently, even though
`not explicitly, disclosed in the parent application. 4 Claims which are not adequately disclosed in the parent application, on
`the other hand, have an effective filing date of the CIP application itself. 5 The practical effect of inadequate disclosure is the
`invalidity of the later-filed claims under 35 U.S.C.A. § 103(a) over the prior applications, or under 35 U.S.C.A. § 102 or§
`103 over intervening prior art. 5.50 Similarly, an application which claims priority under 35 U.S.C.A. § 119 based upon an
`earlier foreign application has the effective filing date of that foreign application if the invention was adequately disclosed in
`the foreign application. 6 Note, however that the effective filing date of a U.S. patent application for purposes of determining
`its status under 35 U.S.C.A. §§ 102(b) — (e) may not be (and probably will not be) the date of the earliest filed foreign
`application. For example, consider the following situation:
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`1. Original application is filed in Great Britain on November 14, 1991.
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`2. PCT application based upon the British application is filed on November 12, 1992.
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`3. PCT application published May 27, 1993.
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`4. U.S. application filed on May 13, 1994.
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`For 35 U.S.C.A. § 102(b) purposes, the relevant date is "more than one year prior to the date of the application for patent in the
`United States." 35 U.S.C.A. § 363 provides that the filing date of the PCT application is the U.S. filing date for this application.
`Thus, the U.S. filing date is November 12, 1992, and the critical date for § 102(b) prior art is November 12, 1991. 7 A similar
`statutory analysis must be undertaken with respect to § 102(e), which is also tied to the date the U.S. application is filed.
`Note: The America Invents Act (enacted on September 16, 2011) drastically changes § 102 and the rules for determining
`effective filing dates, but only for applications claiming an effective filing date on or after March 16, 2013. 7.50
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`§ 15:5.Overview—Effective filing date, 2 IP Litigation Guide: Patents & Trade Secrets...
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`Determination of the effective filing date can, therefore, be intimately tied into the inquiry into adequate disclosure under
`§ 112, discussed in greater detail in § 15:35. Adequate disclosure under § 112 includes a best mode inquiry, an enablement
`inquiry, and a written description inquiry. 8 Note: For proceedings commenced on or after September 16, 2011, a disclosure
`need no longer satisfy the best mode requirement. 8.50 The question of adequate disclosure in general is a question of law,
`but it subsumes a question of fact, namely whether the written description requirement of § 112, ¶1 has been satisfied. 9 The
`written description requirement is directed to whether one of ordinary skill in the art, reading the specification, would discern
`that the inventor had possession at that time of the claimed subject matter. 10
`Assuming that the enablement requirement is also met, a claim is entitled to the filing date of a parent application if the
`claimed invention is disclosed in the parent application in sufficient detail to satisfy the "written description" requirement. 11
`The written description requirement prevents the obtaining of an earlier filing date where the invention is only "obvious" from
`the original disclosure. 12 See § 15:34. In addition, the circumstances surrounding the prosecution of such a patent should
`be examined to determine whether the disclosure requirements were satisfied. 13 For example, the prosecution history of a
`patent may reveal that the patentee is estopped from obtaining the earlier filing date of a parent application for one or more
`claims. 14 In such a case, the Federal Circuit stated: “[A]rguments made to persuade an examiner to allow an application
`trump an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date.” 15
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`Westlaw. © 2013 Thomson Reuters. No Claim to Orig. U.S. Govt. Works.
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`Footnotes
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`See, e.g., Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994) ("A CIP application
`can be entitled to different priority dates for different claims."); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438, 221
`U.S.P.Q. (BNA) 97 (Fed. Cir. 1984) (overruling on other grounds recognized by, Gargoyles Inc. v. Aearo Corp., 49 U.S.P.Q.2d
`(BNA) 1556, 1998 WL 988196 (D. Mass. 1998)) ("A C-I-P application is different from an original patent application, however, in
`that it often generates two effective filing dates applicable to different parts of the same patent.").
`A patent applicant may file subsequent applications based upon the disclosure of the original application. These applications include
`continuation applications, which have identically the same disclosure as the original application, and continuation-in-part (CIP)
`applications, which contain additional disclosure. Under 35 U.S.C.A. § 120, these applications (if certain requirements set out in the
`statute are met) are entitled to the original application's filing date to the extent that they claim matter adequately disclosed under §
`112 in the original application. In relevant part § 120 provides: "An application for patent 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."
`See also Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 555–56, 32 U.S.P.Q.2d (BNA) 1077 (Fed. Cir. 1994),
`setting out the various types of continuing applications and discussing some of the similarities and differences. In Transco, the
`court also discusses two additional concepts: the parent application, and the original application. The "parent" generally refers to the
`immediately preceding application upon which a continuing application claims priority. 38 F.3d at 556. An "original" application is
`the first application in a chain of continuing applications. Id.
`Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988, 992, 33 U.S.P.Q.2d (BNA) 1274 (Fed. Cir. 1995), reh'g denied, in banc
`suggestion declined, (Apr. 14, 1995) ("A claim in a CIP application is entitled to the filing date of the parent application when
`the claimed invention is described in the parent specification in a manner that satisfies, inter alia, the description requirement of
`35 U.S.C.A. § 112.") (finding adequate disclosure); Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556, 32
`U.S.P.Q.2d (BNA) 1077 (Fed. Cir. 1994) ("no matter what term is used to describe a continuing application, that application is
`entitled to the benefit of the filing date of an earlier application only as to common subject matter"); Waldemar Link v. Osteonics
`Corp., 32 F.3d 556, 558, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994) ("matter disclosed in the parent application is entitled to the
`benefit of the filing date of the parent application."); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438, 221 U.S.P.Q.
`(BNA) 97 (Fed. Cir. 1984) (overruling on other grounds recognized by, Gargoyles Inc. v. Aearo Corp., 49 U.S.P.Q.2d (BNA) 1556,
`1998 WL 988196 (D. Mass. 1998)) ("The earlier filing date of the parent application pertains to material in the C-I-P application
`also disclosed in the prior application.").
`The question of adequate disclosure for filing date purposes is measured by the standard set out in 35 U.S.C.A. § 112, ¶1. See, e.g.,
`Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994) ("Determination of whether a
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`priority document contains sufficient disclosure under 35 U.S.C.A. § 112, first paragraph is a question of law.") See §§ 15:34 to 15:36
`for a discussion of the disclosure requirements of § 112.
`Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988, 992–93, 33 U.S.P.Q.2d (BNA) 1274 (Fed. Cir. 1995), reh'g denied, in banc
`suggestion declined, (Apr. 14, 1995) ("the later explicit description of an inherent property does not deprive the product of the benefit
`of the filing date of the earlier application"); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438, 221 U.S.P.Q. (BNA) 97
`(Fed. Cir. 1984) (overruling on other grounds recognized by, Gargoyles Inc. v. Aearo Corp., 49 U.S.P.Q.2d (BNA) 1556, 1998 WL
`988196 (D. Mass. 1998)) ("If matter added through amendment to a C-I-P application is deemed inherent in whatever the original
`parent application discloses, however, that matter also is entitled to the filing date of the original, parent application.").
`See, e.g., Go Medical Industries Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1272, 80 U.S.P.Q.2d 1629 (Fed. Cir. 2006) (priority
`denied because invention not disclosed in parent application in a manner that satisfied the best mode requirement); Waldemar Link
`v. Osteonics Corp., 32 F.3d 556, 558, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994) ("Claims containing any matter introduced in
`the CIP are accorded the filing date of the CIP application."); U.S. Environmental Products Inc. v. Westall, 911 F.2d 713, 716, 15
`U.S.P.Q.2d (BNA) 1898 (Fed. Cir. 1990) ("Because the multiple layer filter plate in the CIP application, filed August 2, 1978, was
`not disclosed in the parent application filed in 1976, the CIP application was not entitled to the filing date of the parent application.
`The critical date thus became August 2, 1977."); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438, 221 U.S.P.Q. (BNA)
`97 (Fed. Cir. 1984) (overruling on other grounds recognized by, Gargoyles Inc. v. Aearo Corp., 49 U.S.P.Q.2d (BNA) 1556, 1998
`WL 988196 (D. Mass. 1998)) ("New matter in a C-I-P application has the filing date of that C-I-P application."). See also Manual
`of Patent Examining Procedure § 201.11.
`See, e.g., Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1252-53, 70 U.S.P.Q.2d (BNA) 1321 (Fed. Cir. 2004).
`See, e.g., Utter v. Hiraga, 845 F.2d 993, 997, 6 U.S.P.Q.2d (BNA) 1709 (Fed. Cir. 1988) (benefit of Japanese filing date accorded
`U.S. application because the Japanese application complied with the enablement and written description requirements of 35 U.S.C.A.
`§ 112, ¶1.).
`SeeGroup One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1044–45, 59 U.S.P.Q.2d (BNA) 1121, 45 U.C.C. Rep. Serv. 2d 88 (Fed.
`Cir. 2001), reh'g and reh'g en banc denied, (Aug. 8, 2001) and reh'g and reh'g en banc denied, (Aug. 9, 2001) and cert. denied, 534
`U.S. 1127, 122 S. Ct. 1063, 151 L. Ed. 2d 967 (2002).
`7.50 America Invents Act § 3(n).
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`Go Medical Industries Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1272, 80 U.S.P.Q.2d 1629 (Fed. Cir. 2006) (priority denied because
`invention not disclosed in parent application in a manner that satisfied the best mode requirement); Vas-Cath Inc. v. Mahurkar, 935
`F.2d 1555, 19 U.S.P.Q.2d (BNA) 1111 (Fed. Cir. 1991) ("we hereby reaffirm, that 35 U.S.C.A. § 112, first paragraph, requires a
`'written description of the invention' which is separate and distinct from the enablement requirement."); Utter v. Hiraga, 845 F.2d
`993, 6 U.S.P.Q.2d (BNA) 1709 (Fed. Cir. 1988) (benefit of foreign filing date obtained where foreign application "complied with
`the enablement and written description requirements of 35 U.S.C.A. § 112 ¶1 as to the [claimed] subject matter").
`The America Invents Act was enacted on September 16, 2011, and in § 15(b) to (c) provides that “best mode” disclosure is not
`required by § 119 or § 120 to establish an effective date.
`Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158, 47 U.S.P.Q.2d (BNA) 1829 (Fed. Cir. 1998) ("Because the issue of whether the written
`description requirement has been satisfied is a question of fact, we must determine whether substantial evidence supports the jury's
`verdict that the requirement has been met."); Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558–59, 31 U.S.P.Q.2d (BNA) 1855
`(Fed. Cir. 1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 U.S.P.Q.2d (BNA) 1111 (Fed. Cir. 1991); Utter v. Hiraga,
`845 F.2d 993, 998, 6 U.S.P.Q.2d (BNA) 1709 (Fed. Cir. 1988).
`Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994) (in discussing the written
`description requirement, the court stated: "The fact finder must determine if one skilled in the art, reading the original specification,
`would immediately discern the limitation at issue in the patent."); Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 865,
`26 U.S.P.Q.2d (BNA) 1767 (Fed. Cir. 1993), reh'g denied, in banc suggestion declined, (June 28, 1993), quoting Vas-Cath Inc. v.
`Mahurkar, 935 F.2d 1555, 19 U.S.P.Q.2d (BNA) 1111 (Fed. Cir. 1991).
`The written description requirement was described in Vas-Cath as follows: "Although [the applicant] does not have to describe exactly
`the subject matter claimed, …, the description must clearly allow persons of ordinary skill in the art to recognize that [he or she]
`invented what is claimed. … The test for sufficiency of support in a parent application is whether the disclosure of the application
`relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter." 935
`F.2d at 1563 (citations and quotations omitted).
`See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158, 47 U.S.P.Q.2d (BNA) 1829 (Fed. Cir. 1998) ("For a claim in a later-filed
`application to be entitled to the filing date of an earlier application under 35 U.S.C.A. § 120 (1994), the earlier application must
`comply with the written description requirement of 35 U.S.C.A. § 112, ¶1 (1994)."); Lockwood v. American Airlines, Inc., 107 F.3d
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`1565, 1571, 41 U.S.P.Q.2d (BNA) 1961 (Fed. Cir. 1997); Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558–59, 31 U.S.P.Q.2d
`(BNA) 1855 (Fed. Cir. 1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 U.S.P.Q.2d (BNA) 1111 (Fed. Cir. 1991).
`In re Huston, 308 F.3d 1267, 1277, 64 U.S.P.Q.2d 1801 (Fed. Cir. 2002).
`Waldemar Link v. Osteonics Corp., 32 F.3d 556, 559, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994); Litton Systems, Inc. v. Whirlpool
`Corp., 728 F.2d 1423, 1438, 221 U.S.P.Q. (BNA) 97 (Fed. Cir. 1984) (overruling on other grounds recognized by, Gargoyles Inc.
`v. Aearo Corp., 49 U.S.P.Q.2d (BNA) 1556, 1998 WL 988196 (D. Mass. 1998)) ("Before any factual determination can be made
`as to whether newly added matter is inherent in the parent application, however, the circumstances surrounding the prosecution of
`the patent in the PTO must be examined.").
`See, e.g., Waldemar Link v. Osteonics Corp., 32 F.3d 556, 560, 31 U.S.P.Q.2d (BNA) 1855 (Fed. Cir. 1994) (no estoppel found, the
`court holding that: "Estoppel only arises when a clear, unambiguous rejection gives rise to a choice of appealing or accepting the
`rejection, and the applicant accepts the rejection and expressly or impliedly concedes its correctness."); Paperless Accounting, Inc.
`v. Bay Area Rapid Transit System, 804 F.2d 659, 663, 231 U.S.P.Q. (BNA) 649 (Fed. Cir. 1986); Litton Systems, Inc. v. Whirlpool
`Corp., 728 F.2d 1423, 1438, 221 U.S.P.Q. (BNA) 97 (Fed. Cir. 1984) (overruling on other grounds recognized by, Gargoyles Inc.
`v. Aearo Corp., 49 U.S.P.Q.2d (BNA) 1556, 1998 WL 988196 (D. Mass. 1998)) (estoppel found where patentee's actions taken in
`response to a final rejection under § 112, ¶1 resulted in the filing of a C-I-P application).
`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262, 1270, 94 U.S.P.Q.2d 1917 (Fed. Cir. 2010).
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