Docket No. 2015-1574
PROST, LINN, TARANTO
June 21, 2016
Brief Summary: The FC panel concluded that the continuing application may be filed on the same day the parent issues, reversing the DC decision holding that it must be filed at least the day before issuance.
Summary: The question here was whether a continuing patent application has to be filed at least one day before the parent application issues as a patent or can be filed on the same day and still claim priority to the parent (“filed before the patenting” of the earlier application). The FC panel concluded that the continuing application may be filed on the same day the parent issues based on Supreme Court approval of same-day continuations in 1863, the 1952 Patent Act that introduced section 120 (“broadly a codification of existing continuation practices”), prior approval “by a consistent, clearly articulated agency practice going back at least half a century”. Thus, the 2015 Delaware DC decision (1:12-cv-00259) holding Immersion’s patent was not “filed before the patenting” of its parent application “because they were filed on the same day” was reversed.