Ending Self-Collision in Continuation-In-Part Patent Applications

Imagine building most of a great machine, and then filing a patent application on that machine because you want a return on the effort you spent building it. Years later, imagine filing a continuation-in-part (CIP) patent application after finishing the machine, and being told that in order to get the patent, you have to distinguish over your own initial disclosure. What a shame that this type of a statement has to be made to inventors. Patents are certainly needed to maintain competitive advantage, but one thing should not stand in the way of inventors who procure them—themselves.

When inventors file CIP patent applications, their claims are entitled to the filing date of the earlier application they are linked to—a priority patent application—only when the priority application supports the entire claims as required by 35 U.S.C. § 112(a). This means that all claims in CIP applications which are not entirely supported by the priority application take the CIP filing date as their effective filing date under 35 U.S.C. § 100(i) and 120. For inventors, the harsh part is that if the priority application was published more than one year before that CIP filing date, that publication becomes prior art against all new-matter claims under 35 U.S.C. § 102(a)(1). Current practice does not parse within a claim when determining an effective filing date. See MPEP § 2152.01 and MPEP § 2133.01.

On the other hand, under 35 U.S.C. § 102(b)(2), the parent application is often precluded as 35 U.S.C. § 102(a)(2) prior art against the inventor as of its filing date. What this means is that if an inventor files a priority application for an invention with elements ABCD, and then files a CIP more than one year after the parent has published with elements ABCDE, the parent publication will often be cited as a primary 35 U.S.C. § 103 reference against the inventor in the CIP application. Patent attorneys mitigate this risk by filing the CIP before the one-year deadline or by filing a standalone nonprovisional to avoid sacrificing patent term (and thus facing the publication head on). The result for inventors in either situation is a mess.

Not only do inventors have to fight their competitors when arguing before the United States Patent and Trademark Office (USPTO), this rule means they also have to fight themselves, even when they have not surrendered possession. Now of course, if an inventor procures a patent, and then five years later files a CIP patent application for an improvement to the original invention, we are not going to let the new patent last twenty years from the CIP filing date. That is not the issue here—inventors in CIP applications are not double dipping in the system, but instead are simply improving over their own improvements. They should not be forced to distinguish over their own inventions, particularly when they willingly sacrifice patent term by establishing a link to a priority application.

The Solution

The solution is simple—the publication of a priority application should not be Section 102 prior art for an element in a CIP claim when the priority application supports the element under Section 112(a). In simple terms—the publication of the priority application should not be applied as prior art in a CIP application, meaning for a CIP system with elements ABCDE, the inventor’s own priority publication with elements ABCD would not be prior art in a Section 103 rejection of an ABCDE claim.

For Congress, this would mean amending the definition of “effective filing date” in Section 100(i) and the corresponding benefit provision in Section 120 so that, in a CIP, an individual claim element which is fully supported by a priority application would retain the parent’s filing date for prior art purposes under Section 102. In this case, the publication of the priority application would no longer be available as prior art against the supported elements, meaning inventors would not have to fight themselves. The claim as a whole would still be examined for enablement, written description, and obviousness, but the cutoff date for prior art would no longer be the same for every individual element.

Courts and the USPTO have refused to split effective priority dates within a single claim for a very long time, and after the America Invents Act (AIA), the only place this change could happen would be in Congress. While there would be friction associated with amending Section 100(i) and 120, the priority claim that an inventor makes when filing a CIP is evidence that he or she still had possession of ABCD. In other words, the claim to ABCDE in the CIP should not be destroyable by the publication of the parent application.

Addressing the Skeptics

It seems like no one would be comfortable telling inventors that they should have to fight themselves when they willingly sacrifice patent term by filing CIPs, but that’s not the case. The AIA, for instance, codified the approach of giving single priority dates for entire claims in a CIP. This made change much more difficult.

While USPTO workload would increase with element-by-element analysis, the core reason for the prohibition is not convenience, it is doctrinal. Proponents hold that a CIP claim which mixes supported and new-matter elements is only possessed in its entirety as of the CIP filing date, and that when it comes to analyzing prior art, entire possession is paramount. This is their justification.

The problem with this view is that inventions are incapable of being entirely possessed by inventors—it is impossible. The truth is that inventions can only be stewarded at instances in time. Matter can’t be created or destroyed (at least not by mortals) and patent applications are only snapshots of inventions. When it comes to possession, we have to know who owned which claim elements and when—there must be a time component involved to have any worthwhile conversation about possession.

Amending the definition of “effective filing date” in Sections 100(i) and 120 would prevent the entire story from being defined by someone who puts the final piece in a machine. In the case of facing a priority publication as prior art, some inventors decide to get insurance halfway through by filing a nonprovisional patent application, and then a few years later file a CIP application when they finish the machine. There’s nothing wrong with that picture, and in fact it is prudence on the part of inventors—a finished machine cannot be truly appreciated without understanding its construction. Provided inventors don’t double dip, meaning they do in fact file a CIP application, the initial efforts and the final efforts should both be recognized for what they are—possessions of different portions of an invention constructed over time. Modern claim charting technology and electronic tools make tracking different priority dates much easier now than in the past.

Yes, element-by-element analysis would make examination more difficult, but making this change would not be a radical departure from how the USPTO currently examines patent applications. The analytical machinery for distinguishing among claim elements already exists. When Section 103 rejections are made, examiners apply one reference to claim element A and another to claim element B, and then conclude that the combination would be obvious. When Section 112 rejections are made, examiners likewise assess each claim element individually. There’s nothing magical about priority when it comes to CIP claim elements. In fact, the USPTO already performs element-by-element analysis to determine whether a claim as a whole gets the date of the priority application. Amending Section 100(i) and Section 120 as outlined above would capitalize on existing USPTO capabilities to more accurately characterize possession of an underlying invention.

Finally, some might say that publication creates a public reliance and the one-year grace period is enough. While those concerns are understandable, we must be honest about the patent term being sacrificed when CIP applications are filed. The one-year grace period is not enough of a shield when improvements come years down the road, particularly when those improvements are still within the lifespan of the priority application. Leaving aside for now whether third-party intervening art should be applied to claim elements supported by a priority application, history in this case is calling for a much better shield to protect inventors.

Image Source: Deposit Photos
Author: VadimVasenin
Image ID: 192415702