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« Enzo Biochem Inc. v. Applera Corp. (Fed. Cir. 2015) | Main | Gotta Dance? Apparently Not -- A Biosimilar Update »

March 18, 2015


Kevin, as usual, spot-on analysis. A few random thoughts that came to mind as I read this:

First, as you said at the end, if the PTO misinterpreted statute and said the continuation filed on the day the parent patent issued was entitled to the benefit of the earlier application, that doesn't entitle filers to continuation status - the statute says what it says. Having said that, recall the Aristocrat case, where the PTO allowed a one-day-late national phase entry of a PCT, under the rubric of a petition for revival of an unintentionally abandoned application (viz. the PCT). The statute explicitly did NOT provide for such revival at the time, but when the case came before the CAFC, the CAFC basically said, absent a clear showing of fraud, if we get into the business of second-guessing the PTO on whether or not a revival is proper, we'll be swamped, so improper revival is not a defense to a charge of infringement. The unfortunate outcome of Aristocrat has been a view within the PTO that many of its decisions are beyond review. While I don't advocate affirmance of the DC's decision here as a way to invalidate thousands of patents at one go, such affirmance would certainly put the PTO in its place, and outcome with its own merit. Reversal, on the other hand, would reinforce the "you can't touch this" mentality within certain parts of the PTO.

The second thing is that, IIRC, the lacuna that came under the microscope in Aristocrat was fixed legislatively in the AIA. Which leads me to think of two recent patent-related legislative fixes that took effect retroactively. Recall that there was a problem with the validity of the appointment of some BPAI judges, which seemed to call into question the validity of decisions in which those judges participated. Congress fixed that retroactively. Ditto the case of bivalirudin, whose CEO basically admitted that they didn't deserve a patent term extension because the PTE request was filed a few days late, the attorneys having docketed the deadline as two months instead of 60 days. But thanks to some creative lawyering (and an unwitting helping hand from the PTO), TMC got a stay from a judge keeping the patent alive, long enough to buy retroactive legislation as part of the AIA that saved its skin. If Congress could so act in those cases, it could act similarly her to clarify the statute, with retroactive effect, so that continuations filed on the day the parent issues are entitled to continuation status.

Finally, the fact that the PTO says something doesn't absolve us patent practitioners from doing our job. I don't know how many of us can say for sure that we've *never* filed a continuation on the day the parent patent issued, and given the PTO's long-standing view and the lack of controlling caselaw, I'm not sure it would rise to the level of malpractice if any of us did so. On the other hand, like many of us, I've been aware for some time of the tension between the statutory language and PTO policy and the lack of controlling case law on this point, and as a matter of practice I advise clients to file continuations before the issue date of the parent, regardless of what the PTO says. You want to file on Tuesday instead of Monday? Caveat emptor.

The obviously risky step [what if some filing defect needs fixing?] in filing a continuation on the last possible day only made even financial sense for old patents under the old patent term which did not run from the original filing date, rather, from the issue date. Why has anyone still been doing so since then?


I think one reason in the past (which has gotten better with EFS/PAIR) was that the Office was not always reliable in notifying inventors or their counsel of the grant date prior to the date. So sometimes the first notice that the patent would grant was on that day.

Thanks for the comment.

First of all wonderful analysis. But, I think by mistake the copy of judgment that you have attached is related to claim construction only.

The judgment related to the aforesaid 35 U.S.C. §120 issue can be read from:

Thanks for the post, Kevin. I think this ruling if upheld might also jeopardize many additional patents in which a continuation or divisional was filed on the day on which the preceding/parent application was abandoned. And also any patents issuing from subsequently filed applications in the same priority chain. I bet there are at least thousands of such patents.

The patent office says that it is sufficient to file a continuation patent application on the same day that a patent issues. The court says that the patent office isn't entitled to Chevron deference on this because it's inconsistent with the plain reading of the statute.

This argument is just plain wrong because it assumes facts not in evidence. The court has no idea when patents issue. The patent office, being the entity that issues patents, decides WHEN a patent issues. It isn't just that it is entitled to deference on this issue, it literally is the entity that decides this.

Thus, if the patent office says that it is sufficient to file a continuation patent application on the same day that a patent issues, this might be because it knows that it issues patents at 11:59:59 PM on the day of issuance, thus making any continuation application filed that day filed before the issuance.

This is a perfectly rational way to reconcile the PTO's position with the statute. It isn't a question of whether the PTO should be given deference in interpreting the statute, it's simply a reflection of the fact that the PTO is the entity that sets when a patent issues and so is in the best position to determine whether a continuation was filed before issuance of the parent. The PTO determined that it was and granted the priority claim. The court has to assume facts not in evidence (the time the PTO issued the patent) to reach its conclusion.

I'd add to the list the deference given to the PTO in construing PTA rules, which are dense, sometimes contradictory, and do not appear to further the goal of expediting prosecution.

The courts now seem less willing to consider equity or reasonableness in deference to agency action. This gives enormous power to the agencies.

Keven, I appreciate your comment that "the Office was not always reliable in notifying inventors or their counsel of the grant date prior to th[at] date" But applicants certainly had Notices of Allowance and final fee payment dates, providing more than enough advance notice of the need to soon file any continuations or divisionals. So I wonder if this filing on the last possible date is just a habit of some folks that should have changed when the patent term change changed it into a bad habit? [I also do not think it was that common a practice outside of pharmaceuticals, etc. anyway?]

For what it is worth, I believe that patents issue at noon on Tuesday, not at 12:01 AM. See page 10 in the attached link:

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