Priority Chain Can Be Broken if Parent Application Has No Written Description Support for Claims Under Reexamination
In Re NTP, Inc. (decided 8/1/11)By: Marc S. Johannes
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What This Means to You
- When requesting reexamination of a patent that claims priority to an earlier application, consider whether the priority chain can be broken by showing that the priority application does not support one or more claims for which reexamination is to be requested, thereby making available any intervening patents or printed publications as prior art.
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Overview
The US Court of Appeals for the Federal Circuit (Federal Circuit) held that written description support for an issued claim subject to reexamination could be assessed for the purposes of determining whether the claim is entitled to the priority date of a parent application. In In Re NTP, Inc., the Federal Circuit upheld a decision by the Board of Patent Appeals and Interferences (“the Board”) that the claims of the subject patent under reexamination were not entitled to the priority date of the patent’s parent because the parent failed to provide written description support. Thus, an intervening reference qualified as prior art to the subject patent, and the prior art anticipated each of the claims of the subject patent.
Case Background
This is the first of two cases involving patents owned by NTP, Inc. NTP’s U.S. Patent No. 6,317,592 (“the ‘592 patent”) was subject to a reexamination proceeding. The Board held that all claims of the ‘592 patent were anticipated by U.S. Patent No. 6,216,694 (“Lazaridis”), which qualified as prior art because the Board determined that the claims of the ‘592 patent were not entitled to the priority date of U.S. Patent Application No. 09/161,462 (“Parent Application”), because the Parent Application did not provide written description support for the claims of ‘592 patent.
Decision Analysis
In arguing that Lazaridis should not be considered during the reexamination proceeding against the ‘592 patent, NTP provided two arguments:
- the statutory limitation on the scope of reexamination proceedings to substantial new questions of patentability (SNQs) based on prior art consisting of patents or printed publications prohibited a priority analysis based on the sufficiency of the disclosure; and
- the examiner had already considered priority during the original examination and therefore no SNQ was raised in this respect.
The Federal Circuit disagreed that the reexamination statutes prohibit a priority analysis based on the sufficiency of the disclosure, arguing that such analysis is a necessary tool to determine whether patents or printed publications qualify as prior art.
The Federal Circuit also concluded that the prosecution history did not demonstrate that the examiner had in fact considered whether the Parent Application supported the issued claims during the original examination. The court refrained from answering whether a prosecution history that does demonstrate that an examiner performed a priority analysis would prevent such an analysis from being performed during reexamination.
Takeaways
When requesting reexamination of a patent that claims priority to an earlier application (even as a straight continuation application), it is important to consider patents or printed publications that would only be prior art to the subject patent if the priority chain could be broken, as such intervening patents or printed publications may be available as prior art, provided it can be shown that the priority application does not support claims of the subject patent.
