Take care to update the priority statement in each successive child application to properly reflect the entire chain of priority from the perspective of the new application. The “specific reference” requirement for claiming priority mandates “each [intermediate] application in the chain of priority to refer to the prior applications.” This is a strict requirement, and, as here, could be fatal for the child application if any intervening applications are omitted from the priority statement.
Background / Facts: The patents at issue here have a long chain of priority, which includes a French application (“French Application 1b”), a subsequent international application (“International Application 2b”), a first U.S. application (“U.S. Application 4”), and two other later-filed U.S. applications (“U.S. Application 6” and “U.S. Application 8”). Although the priority statement in U.S. Application 4 was complete and proper, the priority statements in U.S. Applications 6 and 8 left out U.S. Application 4 in making their claim for priority to International Application 2b. “Instead,” in the words of the court, “it is apparent from reviewing the disclosure in U.S. Application 4 that [the patentee] recycled the priority claim in that application for use in U.S. Applications 6 and 8,” without properly updating it from the perspective of the new applications.
Issue(s): Whether the later-filed patents are barred from claiming the benefit of the earlier priority dates for failure to comply with the “specific reference” requirement of 35 U.S.C. § 120.
Holding(s): Yes. “The priority chain disclosed in U.S. Applications 6 and 8 insufficiently and incorrectly stated that (1) U.S. Application 6 is a continuation-in-part of International Application 2b, omitting any reference to intermediate U.S. Application 4; and (2) U.S. Application 8 is a continuation- in-part of International Application 2b, omitting citations to both intermediate U.S. Applications 6 and 4. More is required.” The patentee argued that the reference to “this application” in the priority statements of U.S. Applications 6 and 8 (deriving from the recycled language of U.S. Application 4) could be understood to refer to U.S. Application 4, since that is the only reading that would be factually accurate, and thereby satisfy the “specific reference” requirement. The court, however, dismissed this as “an attempt at linguistic gymnastics [that] makes little sense relative to the straightforward, plain language meaning of the phrase [‘this application’],” and “decline[d] to adopt the ‘reasonable person’ test proposed by [the patentee] to interpret the sufficiency of a priority claim under 35 U.S.C. § 120.” Thus, “because intermediate U.S. Applications 6 and 8 failed to specifically reference the earlier filed applications in the priority chain,” they are “not entitled to claim the priority date of International Application 2b under § 120,” which therefore qualifies as anticipatory prior art and invalidates the patents at issue.