Same-Day Continuation Applications Entitled to Earlier Application's Filing Date: Federal Circuit | Practical Law

Same-Day Continuation Applications Entitled to Earlier Application's Filing Date: Federal Circuit | Practical Law

In Immersion Corp. v. HTC Corp., the US Court of Appeals for the Federal Circuit ruled that a continuation patent application filed at the US Patent and Trademark Office (USPTO) on the same day that a related earlier-filed patent application is granted is proper and entitled to the earlier application's filing date.

Same-Day Continuation Applications Entitled to Earlier Application's Filing Date: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 22 Jun 2016 • USA (National/Federal)
In Immersion Corp. v. HTC Corp., the US Court of Appeals for the Federal Circuit ruled that a continuation patent application filed at the US Patent and Trademark Office (USPTO) on the same day that a related earlier-filed patent application is granted is proper and entitled to the earlier application's filing date.
On June 21, 2016, in Immersion Corp. v. HTC Corp., the US Court of Appeals for the Federal Circuit ruled that a continuation patent application filed at the US Patent and Trademark Office (USPTO) on the same day that a related earlier application is granted is both proper and appropriately entitled to the earlier application's filing date ( (Fed. Cir. 2016)).
Immersion Corp. filed a continuation application for US Patent No. 7,148,875 ('875 patent) on the same day that the USPTO issued US Patent No. 6,429,846, a related patent stemming from an earlier-filed application. HTC Corp. argued that the continuation was not proper, and therefore was not entitled to the earlier application's filing date. Section 120 of the Patent Act requires a continuation to be filed "before the patenting" of the earlier application (35 U.S.C. § 120).
HTC asserted that "before" in section 120 is distinct from "on or before," and therefore does not permit continuations filed on the same day to enjoy the benefit of the earlier filing date. The US District Court for the District of Delaware agreed, finding that because Immersion had filed the continuation on the same day that the earlier application issued, it had not filed "before the patenting" under section 120. Therefore, the court found the '875 patent invalid because a related foreign application, which disclosed the substance of the '875 patent claims, was filed more than a year before the revised filing date of the '875 patent that the court adopted.
The Federal Circuit reversed the district court's decision, holding that a continuation filed on the same day as an earlier application is proper and therefore entitled to the earlier filing date. The Federal Circuit reasoned that:
  • Other parts of the Patent Act specify time with explicit references to units such as days, months, or years, unlike Section 120.
  • The USPTO has a long history of allowing same-day continuations for priority-date purposes, dating from the Supreme Court's 1863 decision in Godfrey v. Eames (68 U.S. (1 Wall.) 317 (1863)).
  • Nothing in the legislative history of the 1952 Patent Act indicates an intent to change the approval of same-day continuations.
  • Post-Patent Act USPTO regulations refer to co-pending continuation applications filed "on the same day or before" the patenting of the first application.
  • The district court ruling would disturb over 50 years of public and agency reliance on the permissibility of same-day continuations.
  • The district court ruling would potentially impact over 10,000 patents without resolving any countervailing policy concerns.
Therefore, the Federal Circuit reversed the district court and held that Immersion's continuation application was proper and was entitled to the earlier application's filing date. The decision upholds a long-standing USPTO practice and removes any questions regarding the practice that the district court's decision raised.