Patent Samples
Patent Defense
Patent Enforcement
Working with In-House Attorneys
Trademark Enforcement
Trademark Defense
Worldwide IP
Browse Patent Samples
Automotive Patents
Construction Patents
Consumer Products Patents
Electronics Patents
Food, Beverage, & Other Culinary Patents
Manufacturing Patents
Medical Products & Devices Patents
Optics Patents
Software & App Patents
Tools & Equipment Patents
First-Time Inventor?
Why Patent Your Invention in a Bad Economy?
Videos on Patents
Search 180+ Articles
Patent process
Overview of Patent Process
Patent process timeline and major milestones
Patent Process: Invention to Patent Granted (Simplified)
Patent process, overall steps and procedures
Overview of the examination process within the USPTO
Highs and lows of securing patent protection for your invention
What is the Patent Office procedure after filing a patent application?
Benefits of a Patent Search
What is a patent search and How to do it?
Patent attorneys, agents and the USPTO can help with the patent process
USPTO Website
Invention Agreements
What is an NDA and when to use them?
How to use a contract to protect your invention?
Working with others without losing your IP rights
Patent Assignments for Independent Contractors
Losing Invention Rights When Hiring or Collaborating with Others
Avoid Problems: Get an Invention Assignment Agreement
Protect Inventions
Misconceptions of Provisional Patent Applications
Do you need to get your patent attorney to sign an NDA?
Can a confidentiality agreement protect me like a patent application?
Four types of intellectual property to protect your idea and how to use them
Overview of Patents and Intellectual Property
Patent protection benefits and why every inventor should consider getting one
8 tips to successfully protect your idea
Benefits of Patent Protection
Best uses for design patents
Reasons to only market your invention after securing patent pendency
Dangers of 1 yr grace period under first-inventor-to-file system
File a patent application before telling others about the invention
Risks and benefits of securing software patent protection
Strategy to overcome patentable subject matter rejection
Pros and cons of filing a continuation-in-part application
What is a continuation patent application?
How Patent Applications Work: the Basics
How to respond to an office action?
Request for non-publication of a patent application
Anatomy of a Patent Document
How to write a broad patent application?
Design patents: pros and cons
Patent costs
How much does it cost to get a utility patent?
Provisional Patent Application: Cheap Alternative?
Patent Cost Framework and cash flow
Provisional patent application: a cheap option?
Cheap provisional patent applications
Basics of writing a patent claim for a patent application
Patent Marking: Everything you wanted to know
Avoiding Patent Infringement
Can I Copy My Competitor's Product?
Can I Copy My Competitor's Product? (Design Patent)
Worldwide patents
Pros and cons of securing worldwide patent protection and their steps
Foreign patent filing to secure protection in other countries
Overview of Office Actions
Trademark Registration: common law, state and federal
How to obtain a federal trademark registration?
How to select a trademark?
Protect your idea when pitching to an investor, potential licensee, or buyer
Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA
Orange County Patent Attorney
You are here: Home / Patent application process / After Filing a Patent Application / Earlier priority date given with passing reference in patent application
Earlier priority date given with passing reference in patent application
February 3, 2014 by James Yang
For important or keystone inventions, the initial patent application may expand to a number of further continuing applications (i.e., continuation, divisional, and continuation-in-part applications) which all relate back to the base parent patent application. For example, the entrepreneur or company may develop additional features and aspects related to the base invention over the course of marketing the invention. It may be prudent to add the new features (i.e., inventive subject matter) to the base parent patent application. In these instances, subject matter which is common to both the first and second filed patent applications is afforded a priority date as of the filing date of the earlier filed first patent application. However, the new subject matter introduced into the second patent application is only afforded a priority date as of the filing date of the later-filed second patent application.
In some situations, adding new inventive subject matter to the parent application may be detrimental to the overall strategy of protecting the invention. For example, the term of the second patent may be reduced. The term of the patent originating from the second patent application is calculated from the filing date of the earlier first filed patent application, instead of the filing date of the later filed second patent application. Also, for those claims which are directed to new subject matter, the base parent application (i.e., first filed patent application) may be considered prior art and be used against the second filed patent application.
A. Priority date is the primary dispute in EnOcean case
The issue in EnOcean v. Face Int'l. (Fed. Cir. Jan. 31, 2014) was related to the issue of priority dates for particular claims in EnOcean's patent application. The issue arose in the context of an interference which is a dispute as to who should be awarded the patent on an invention. The opposing parties each had allowable claims directed to the same invention. The party that can prove that he/she was the first to invent is awarded the patent. EnOcean attempted to show that it invented the idea first based on an earlier filed patent application related to the patent application at issue by way of a claim of priority. If the benefit of priority could relate back to its first filed patent application, then EnOcean would be awarded the patent. If not, then Face would be awarded the patent. As such, it was important for EnOceanto prove that the priority date of their claimed invention could relate back to the filing date of the first filed patent application and receive the benefit therefrom. To do so, the claims in the second filed patent application must find support in the first filed patent application.
The priority date of claims in a second later filed patent application is afforded the filing date of the first filed patent application if the first filed patent application provides support.
B. Mere passing reference in first filed patent application provides support to establish priority date
EnOcean utilized the term "means for receiving" and "receiver" in the claims of the second filed patent application. To determine if the claims could claim priority back to the first filed patent application, the first filed patent application must provide support for "means for receiving" and "receiver" limitations. Face argued that the first filed patent application did not provide support for these terms because the first filed patent application included only a passing reference to a "receiver". In particular, the only reference to the term "receiver" in the first filed patent application:
In this case, a typical scenario is that all the switches, for example light switches, upon actuation, emit one or a plurality of radio frequency telegrams which are received by a single receiver and the latter initiates the corresponding actions (lamp on/off, dimming of lamp, etc.). (emphasis in original).
Even with only a passing reference to "receiver', the Federal Circuit held that the claims were supported by the first filed parent application. Even though the first filed patent application did not expressly describe the structure of the receiver and only included a passing reference, the specification must simply permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation so that he may perceive the bounds of the invention. Based on the expert testimony, the court held that one of ordinary skill in the art could know and understand the "receiver" structure from the description given above.
In determining the priority date of any claim of a patent application or patent, the patent application is read from the viewpoint of one of ordinary skill in the art. If one of ordinary skill in the art would know and understand all of the limitations of the claims recited in the second filed patent application from reading the first filed patent application, then the priority date of those claims is the filing date of the first filed patent application, not the second filed patent application.
C. Priority date resolved based on the "one of ordinary skill in the art" standard
The "one of ordinary skill in the art" standard can sometimes be unpredictable in litigation because reasonable minds may differ. Everyone, especially opposing parties, will have different opinions as to what "one of ordinary skill in the art" might understand from the specification of the patent. However, it also gives flexibility such that the patent process is not overly burdensome with overly stringent and formalistic rules that one must always follow, or otherwise, risk invalidity of the patent. For purposes of patent prosecution, the preference in many instances is to anticipate these issues and move away from the "ordinary skill" standard by including more information so that each limitation in the claims is clear as to what is being recited.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected] Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.
James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…
Patent process overview
Patent process explained
How much does a patent cost?
Patent Book
Navigating the Patent System: Learn the patent process and strategies to protect your invention
RECEIVE PATENT ARTICLES
Stay up to date on major changes and get tips on the patent process.
Trademark process and costs
Patent process and costs
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Prosecution Services
Culinary Patents
Medical Patents
James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Sitemap: Pages | Sitemap: Posts
By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.
© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney