Later Filed Applications Must Contain Specific References to Earlier Filed Application to Establish Priority Date
Encyclopedia Britannica v. Alpine Elec. (6/18/10)By: Jessamine Lee
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What This Means to You
- Review all priority claims in intermediate patents or applications to uncover—and then correct—any defective priority claims.
- For those accused of infringing someone else’s patent, scrutinize the priority chain of any asserted patent.
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A Federal Circuit case decided June 18, 2010 answered for the first time the question of what is required for a later-filed patent in a priority chain to be entitled to the priority date of an earlier-filed application.
Background
In Encyclopedia Britannica, Inc. v. Alpine Electronics of America, Inc., the court found that not only must a later-filed patent contain a specific reference to an earlier-filed application to which priority is claimed, but each intermediate application in the priority chain must also specifically reference the earlier-filed application. If one or more such specific references are omitted, the later-filed patent will not be entitled to the benefit of the filing date of the earlier-filed application.
In many circumstances, the inability to benefit from an earlier filing date can be fatal to a patent’s claims, as such may allow intervening documents or events to qualify as prior art to the later-filed patent.
Takeaways
For patent applicants or patent holders, we recommend that the priority claim of each patent or patent application in a priority chain be reviewed carefully, as there are various ways to correct a defective priority claim in an intermediate patent or application.
For those accused of infringing someone else’s patent, this decision provides an additional mechanism for calling the patent’s validity into question, and the priority chain of any asserted patent should be scrutinized accordingly.
