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All Applications in Chain of Priority Must Reference Original Application to Be Entitled to Its Priority Date

June 17, 2010

Decision icon Decision

Last Month At The Federal Circuit - July 2010

Judges: Bryson, Gajarsa, Moore (author)

[Appealed from: W.D. Tex., Judge Yeakel]

In Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Nos. 09-1544, -1545 (Fed. Cir. June 18, 2010), the Federal Circuit held that, to claim priority through a chain of applications, 35 U.S.C. § 120 requires each application in the chain to specifically refer to the prior applications.  In this case, because of a broken priority chain, the Court held that the patents-in-suit were not entitled to the earliest priority date as claimed on the face of the patents.  Therefore, it affirmed the district court’s grant of SJ invalidating the patents under 35 U.S.C. § 102(b). 

Encylopaedia Britannica, Inc. (“Brittanica”) owns the two patents-in-suit.  Both patents-in-suit were filed on June 13, 2005, and both patents claimed priority back to October 26, 1989, through a chain of patents and applications.  The only issue on appeal was whether a second application filed on August 31, 1993, was entitled to the priority date of a first application filed on October 26, 1989, the earliest application in the chain.

When filed, the second application was missing the filing fee and the inventors’ oath or declaration.
Also missing was the entire first page of the specification.  The application neither made reference to the earliest application nor claimed priority to any earlier-filed applications.  Shortly thereafter, the PTO notified Britannica of the deficiencies of the second application, stating that its filing date would be the date that the PTO received page 1 of the specification unless the applicant established by petition that the application was complete without page 1.


“The applicants allowed the ’955 application to go abandoned even after being informed by the PTO of its infirmities.  It makes no sense to allow the applicant to rewrite history and resurrect the ’955 application’s priority claim.”  Slip op. at 12.

Brittanica then filed a petition asserting that the missing page was not necessary to understand the subject matter claimed.  The PTO rejected Brittanica’s petition because of its failure to include the required oath or declaration from the inventors.  Although the PTO dismissed the petition, it indicated that the second application without page 1 could receive the filing date of August 31, 1993, if Britannica would file a request for reconsideration and a supporting oath or declaration from the inventors.  Britannica did not do so.  The PTO later issued a notice of abandonment for the second application.

Before abandoning the second application, Britannica filed a third application claiming priority to the second application and indicating that the second application claimed priority to the earliest application.  Later, Britannica filed a fourth application claiming priority to the earliest application through the third application and the second application.  The two patents-in-suit claimed priority back to the earliest application through the fourth application and this chain of the priority.

The defendants moved for SJ of invalidity under § 102(b).  The district court held that the second application was not entitled to the priority date of the earliest application because it did not contain a specific reference to that application as required by 35 U.S.C. § 120.  Consequently, the later patents in the chain, including the patents-in-suit, could not claim the October 26, 1989, priority of the earliest application.  Reasoning that the patents-in-suit were anticipated by Britannica’s May 16, 1991, published foreign patent application, the district court granted SJ of invalidity. 

On appeal, the Federal Circuit affirmed, agreeing with the district court that § 120 requires all applications in a chain of priority, including both the final application and the intermediate applications, to specifically reference the original application.  The Court thus found that the second application failed to satisfy the requirements of § 120 because it did not contain a specific reference to the earliest application.  Later applications could not cure this defect and restore the priority chain.  The Federal Circuit thus held that there was no factual disputes regarding anticipation and affirmed the grant of the SJ of invalidity.

Summary authored by Zhenyu Yang, Ph.D., Esq.