Filing a continuation application on the same day as its parent application issues is sufficient to satisfy the “before the patenting” requirement for claiming priority under 35 U.S.C. § 120. Here, for example, the fact that the patent being asserted was filed on the same day as its parent application issued was not found to defeat the claim of priority given the lengthy history supporting this interpretation of 35 U.S.C. § 120. “None of the legislative history or contemporaneous commentary indicates an intent to alter [the] long-established result approving same-day continuations for priority-date purposes.” It may therefore be acceptable, even if not the safest of lawyerly practices, to file same-day continuations.
Background / Facts: The patent being asserted here claims priority to an earlier application and was filed on the same day that the earlier application issued as a patent.
Issue(s): Whether, for a continuation application to be “filed before the patenting” of an earlier application as required for claiming priority under 35 U.S.C. § 120, the continuing application has to be filed at least one day before the earlier application is patented, rather than on the same day.
Holding(s): No. While acknowledging that a day-before interpretation “might even be the most natural one to adopt—the one that would fit best with the statute as a whole—if the statute were new and without history,” the court ultimately found the weight of history and reliance thereon to be dispositive. “[T]he repeated, consistent pre-1952 and post-1952 judicial and agency interpretations, in this area of evident public reliance, provide a powerful reason to read section 120 to preserve, not upset, the established position. And the conclusion is reinforced by the fact that Congress has done nothing to disapprove of this clearly articulated position despite having amended section 120 several times since its first enactment in 1952.”