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On Tuesday, June 22, in the case of Immersion Corporation v. HTC, The Federal Circuit on appeal reversed a decision by the Delaware district court, which had held a patent granted on a continuation application to be invalid because the continuation was filed on the same day as the issue of the parent.  35 USC 120 says that a continuation must be “filed before the patenting or abandonment of or termination of proceedings on the first application.”   The district court read this as meaning that the continuation had to be filed the day before grant of the parent.

After noting that the wording of 35 USC 120 does not indicate the degree of granularity required when construing the word “before” (the day before, the minute before?), the Federal Circuit court noted that other parts of the statute do specify times and days when using the word “before”, and went on to consider the origin of continuation practice in the 1864 Supreme Court decision in Godfrey v. Eames.  In that case, it was clear that withdrawal of the previous application and filing of the replacement application had taken place on the same day.  This practice had been followed until the first statutory recognition of “continuation applications in 1952.

Nothing in the legislative history indicated that any change in practice was intended and the United States Patent and Trademark Office’s (PTO) rules for implementation of the statute simply required that the parent and the continuation were “copending” and since 1961, the Manual of Patent Examining Procedure (MPEP) has interpreted this as including filing on the same day as the parent was granted etc. Since the Supreme Court has held that “long standing administrative construction on which reliance has been placed provides a powerful reason for interpreting a statute to support that construction,” the PTO’s interpretation of the statute should not be upset.  To conclude otherwise would have invalidated at least 10,000 patents.

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