Loughlin v. Ling

By Jason Rantanen

Loughlin v. Ling (Fed. Cir. 2012) Download 11-1432
Panel: Lourie (author), Rader, Moore

This opinion concerns the relationship between 35 U.S.C. § 135(b)(2), which limits the circumstances under which an interference may be provoked, and 35 U.S.C. § 120, which provides the benefit of an earlier filing date based on a prior application.  Section 135(b)(2) states:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

(emphasis added).  Ling et al. filed their original application on January 16, 2004.  Four months later, Loughlin et al. filed their application, which was published on November 18, 2004, and which subsequently issued as a patent.  On February 5, 2007, Ling filed a second application that was granted priority to the original application under section 120.  Seeking to provoke an interference, on February 21, 2007, Ling copied into this second application claims from Loughlin's pending application. 

Loughlin contended that Ling's was barred from provoking an interference by § 135(b)(2), as the claims were made more than a year after Loughlin's application was published and Ling's second application was filed in 2007, well after Loughlin's application was published (in 2004).

The Federal Circuit disagreed, affirming the Board of Patent Appeals and Interference's ruling that the priority benefit of § 120 applies to § 135(b)(2) – in essence, treating Ling's second application as if it had been filed as of the filing date of the first, thus taking it outside the scope of the "application filed after" language.  "We agree with Ling that the Board correctly interpreted § 135(b)(2) in view of the plain language of that statute and the benefit provision of § 120. The first sentence of § 120 permits an application to claim the benefit of an earlier filing date, such that the application is treated as having been effectively filed on the earlier date."  Slip Op. at 8.  In reaching this conclusion, the court noted the broad applicability of section 120, such as in the context of § 102(b), (d), and (e), and that the Board has consistently interpreted § 135(b)(2) as including the priority benefit of § 120.

43 thoughts on “Loughlin v. Ling

  1. 43

    Loughlin’s patent issued with Claim 1 solely, which was originally-filed and published Claim 42 (no substantive amendments during examination). What result in he had amended claim 42, such that the scope of issued Claim 1 had not been earlier published? Does 35USC135(b)(2) even/ever apply? Or only (b)(1), with a new 1-year period for copying the claim?

  2. 42

    “How about a real idea? Reinstitute the original Quid Pro Quo and only publish at patent grant? That way you stop penalizing the inventors by basically giving their stuff away for free while each of the processing mountains of backlogs (regular prosecution, RCEs, and Appeals continue to grow and the pilfering of published (but not patented) brain trust is freely accessed by foreign countries.”

    As much as it pains me, I do have to somewhat agree. Although on the whole I feel the balance here still favors the publication we’re doing now, or even before what we’re doing now.

    “As it is now, the government already gets its quo regardless of any quid, and there simply is no real impetus to get the work done.”

    I have to agree with that also. I might even suggest that congress should step in, mandate examination within a year (or whatever around that time). But then, if they leave it an unfunded mandate it won’t help anything. Also, there are people that prefer to hold off examination. In either event, the antiquated old school patent system becomes more and more outdated with every passing year. Indeed, I suffered because of such antiquation, more broadly considered than just our topic of conversation, just yesterday.

  3. 41

    A straight continuation (since it cannot contain any new matter) is already available, and is reflected in public PAIR under the continuity tab.

    The story is only slightly different for a CIP, in that the information that a child exists is shown, but the link is not active. This is not really a big deal, since anything different in the CIP only gets the later filing date, and is in essence a new non published application for that portion (just like any non published application that might otherwise exist).

  4. 40

    Question:

    It has been some time since I have researched application intentionally made secret. A poster has opined that when a related patent is granted, the existence of that application and perhaps its contents then is published. How so? I am not talking here of a prior secret application that the published application relies on for priority. I am talking here about a related application that might claim the benefit of the filing date of a common parent, for example.

    Thus I file application A1, keep it secret. I then file divisional D1 and divisional D2, both secret. If A1 issues, does the PTO disclose the existence of both D1 and D2? If so, under what authority?

  5. 39

    Am I whining when I discuss the policy objectives of Congress?  

    What you say about "support" is equally true in the case of reissue applications directed to previously unclaimed subject matter; and yet, congress has declared a policy of intervening rights.

    Your argument, to the extent there is one, is based on "support."  But from comparison to to policy announced in the reissue statute, that is not a congressionally announced policy, and quite beside the point.

  6. 38

    Because invention is supposed to be difficult and expensive…

    [eyeroll]

  7. 37

    the Chinese cannot steal our IP fast enough

    Because inventing methods for selling people stuff using a computer is so difficult and expensive.

  8. 36

    Yes, because the (almost non-existent) interference problem is so horrible and the Chinese cannot steal our IP fast enough, we should jump at the chance to make everything instantly available.

    /off sarcasm.

    How about a real idea? Reinstitute the original Quid Pro Quo and only publish at patent grant? That way you stop penalizing the inventors by basically giving their stuff away for free while each of the processing mountains of backlogs (regular prosecution, RCEs, and Appeals continue to grow and the pilfering of published (but not patented) brain trust is freely accessed by foreign countries.

    As it is now, the government already gets its quo regardless of any quid, and there simply is no real impetus to get the work done.

    That’s why the timing svcks. That’s why the quality of examination svcks.

  9. 35

    Maybe secrecy of patent applications should be abolished — especially since accelerated examination is available.

  10. 34

    If the senior patent application has support for the claims of the unior patent application, then the junior patent application is at least invalid in view of the senior. I don’t see anything wrong with letting the parties battle this issue out in the PTO instead of the district court.

  11. 33

    Paul F. Morgan states “That’s missing the point that APPLICATIONS not containing any interfering claims do not “interfere” and cannot support an interference – only “made” intefering CLAIMS can.

    I believe that this is an incorrect statement and attempts to avoid the true point of the issue by clinging too closely to a semantic interpretation of “claim.”

    The purpose throughout patent law is to give proper credit. The fundamental aspect of provoking an interference by copying a claim is not the exact words of the copied claim itself, but rather the focus is on who has the earlier right to the invention of the claim. If an earlier application has such a right, and a legal path to invoking that right exists (for example, in dutifully alive continuation or through a path of re-issue), and no new matter is introduced, then the decision reflects the proper application of law.

    To the extent that a wanting of finality for finality’s sake alone interferes with the larger purpose of awarding rights to the proper (original, and not later independent inventor), that motivation is an unjust one. As long as “late claiming” follows the allowable paths (again, for example a legitimate alive continuation), and no new matter is introduced, then the just path is clear.

  12. 32

    It can also exaserbate the “submarine patenting”

    No such thing anymore as submarine patents.

    Not since the switch to the effective date starting with the earliest claimed priority.

    Point of fact: if you have the support in the claimed priority, you deserve the claim (all other appropriate rules such as a live continuation or a reissue within two years (for those broader claims), then you deserve the claim, no matter who later “independently (since when does that matter?) invented or not.

  13. 31

    Compare:

    suckie I noticed that you still have not answered my question Man, this blog has the d-mbest trolls.

    with

    Repeating these questions until they are answered is very helpful to all concerned (suckie’s brainfry notwithstanding).

    W

    T

    F

    Malcolm, your ability to troll know no limits. You really do like to do what you accuse others of doing, don’t you?

    You are esily the site’s biggest troll, bar none.

  14. 29

    suckie I noticed that you still have not answered my question

    Man, this blog has the d-mbest trolls.

  15. 28

    Not exactly true (and if true, so what?)

    If the parent becomes patented, the patent is public, including the indication of related aps. Even if the parent is not patented and not published, no rights can flow except those supported fully by the earlier application. If that earlier application truly supports even add-on claims, then that material was rightfully invented earlier. So why the whining?

  16. 27

    No, I think your attitude, the attitude of “the sky is falling” is far more a cause of (needless) legislation.

    I note that you are quick to turn to insults, including throwing out the “T” word, and yet, you still fail to answer the most relevant question concerning just how small a population the “interference problem” is.

    It’s nice that you attempt to take the high road. Most pushing needless legislation do the same. But let’s try to keep this in perspective with actual facts. The “interference” sky just is not falling.

  17. 26

    Normal clients [other than trolls], who pay for all the costs and risks of patent law, and for whom patent law is intended to protect, must really appreciate an attitude that “we don’t care if your costs and business risks could be reduced to some extent by minor improvements or simplifications in the patent case law or statutes, as long as I am getting paid to do all the [avoidable] extra work.” That attitude is an invitation to more patent legislation.

  18. 25

    So, that might be the case if the applications are being published.  However, if you keep them secret, the public does not know if a continuation is pending at all. 
     
     

  19. 24

    P.S. Most business people and the public in general do not share your views of either the harmlessness of submarine patent applications or the belated claiming of someone else’s later independent inventions for which they made large investments and brought actual products to market.

    Cry me a bleading heart boo hoo. Most business people need a proper clearance done by professionals.

    I noticed that you still have not answered my question on the level of interferences.

    I would also deflate your “but the topic is posted” rationale as saying (again) that this is a non-issue. You don’t have to take the troll-bait just because it is offered.

  20. 23

    Of course there are more important issues, especially the current 101 mess, but this is the case posted on this blog for comments.

    P.S. Most business people and the public in general do not share your views of either the harmlessness of submarine patent applications or the belated claiming of someone else’s later independent inventions for which they made large investments and brought actual products to market.

  21. 22

    It is still overblown and you know it.

    Answer the question: What abysmally small percent of that two million are actually likely to be involved in intereferences?

    Don’t forget, the “prior” filed application that is being claimed for effect must have full legal support for any such new “submarine” claims. That is why this a non-issue. If the full support is actually there, any later filed applications, even if they become patents, should not have become patents in the first place, and would likely fail a post grant review. The whole “submarine” boogeyman is a bunch of malarky. Anything patentable out of the so-called submarine serial applications is well publicized in the parent. Anyone doing due diligance can rightfully see the maximum content patentable from the parent. Anyone can see if there is a live child and anyone can see if the two-year reissue period has passed. I consider any alarmist views on this topic to be pure “trolling” in trying to scare up a non-existent issue.

    You are trying to make a mountian out of a molehill. There are much more pressing issues to fret about. This one should not even make the radar screen.

  22. 21

    See paragraph 3 of comment 1 – this is not just about interferences. It can also exaserbate the “submarine patenting” and defective Rule 131 declaration acceptance problems. Although interferences are infrequent they are expensive and, as noted in comment 1, they increase business uncertainty for product marketing and R&D investments. Now, per this case, even “submarine” serial application owners can copy claims from published applications of others with no late claiming bar.

  23. 20

    and will not apply to perhaps two million or so prior applications and patents

    That overstates the problem by several orders of magnitude.

    What abysmally small percent of that two million are actually likely to be involved in intereferences?

  24. 19

    Yes, eventually, because the first to file application specification will be prior art the latter-to-file cannot get around. But that will not occur until the parties have applications with post March 16, 2013 filing dates, which is going to be a long time and will not apply to perhaps two million or so prior applications and patents.

  25. 17

    The public is on notice that broader claims may issue if a continuation application is pending so no need for intervening rights?

  26. 16

    I’m just curious…

    Will the AIA switch to first to publish provide ‘cover’ for any late claim in any continuation as long as their is proper support in the claimed priority application?

    After all, if the support in the earlier filed application is there, isn’t that enough to disqualify the later divulged item, even if that item has itself earned patent rights?

    Isn’t that one of the main points of First Inventor To File in the first place?

  27. 15

    Yes Ned, you can keep a chain of continuing applications pending as many years as someone like Lemelson or Hyatt and keep on adding all the new claims you want, as long as they are not interfering with an claim to substantially the same invention in an earlier issued patent or application and have 112 support. There is no other remaining U.S. late-claiming prohibition [unlike the EPO, etc.], hence the importance of 135(b.

  28. 14

    Why not?

    If the benefits of the earlier filing date are attributable, why not this benefit as well?

    Don’t you have to look at more than piece of the puzzle?

  29. 13

    Paul, Regarding late claiming policy, I’ve always thought it odd that the reissue statute seems to allows, at least according to current interpretation, one to claim a previously unclaimed invention if one does so within two years of a patent issuing, but only with the proviso that such a late claim is subject to intervening rights, while on the other hand everyone seems to assume that a similar late claim first presented in a continuing application has no intervening rights baggage whatsoever. If there is any avenue of investigation for litigators it is this, because the statutory scheme seems to suggest a sense of Congress that one should have intervening rights with respect to late claims, period.

    This policy interpretation would even be stronger if the reissue statute were seen to prevent the claiming of such a late claim at all regardless that the late claim was first presented within two years. (I think the statute can be read that way.)

  30. 12

    Paul, the new 135(a) which reads in part:

    “…any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention….”

    Note, that what triggers the start of the 1-year period is the publication of the claim. I think that is what is intended by the current statute as well.

  31. 11

    That’s missing the point that APPLICATIONS not containing any interfering claims do not “interfere” and cannot support an interference – only “made” intefering CLAIMS can.
    That is the whole basis of Rule 131 practice and its limitation in 131(a)(1).

  32. 9

    I think that’s exactly right, metoo. As you point out, 135(b)(1) is the more important “statute of repose.” 135(b)(2) just puts a limit on when entirely new players (who will automatically be junior parties and are already at a significant disadvantage) from showing up to challenge a published application.

    I’m ignorant of the history of 135(b)(2), but I think I disagree with Paul that this decision is contrary to Congress’s intent.

  33. 8

    Look at it this way, if copied claims were presented in the parent more than a year after the interfering application is published 135(b)(2) would not apply if the parent was filed before the interfering application was published. So why should it make any difference if they are presented in a later-filed child application?

    And what if there is an earlier-filed provisional application which supports the relevant claims in the non-provisional filed the day after the intefering application publishes? Are you suggesting that 135(b)(2) would apply there, but not if the applicant filed the non-provisional a day prior?

    Also, let’s not forget that we are talking about claims in a published application–quite different than claims in an issued patent where the patentee should be able to have some measure of finality.

  34. 7

    P.S. I do see the basis of the counter-arguments above, but that fact remains that (1) the actual application belated seeking to get into this interference WAS filed long after the earlier and (2) the Court’s interpretation of this statute to treat the subject application as if it were really filed much earlier by treating it as if it were its parent application instead, is obviously NOT what was intended by the “appliction filed after” in this late-claiming-bar statute.

  35. 6

    Here are both parts of the subject statute:

    (b)(1)A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
    (2)A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

  36. 4

    OK, I missed something. Paul, this case is different from In re McGrew in that it is under 135(b)(2)–which was enacted in 1999. In re McGrew was decided under what is not 135(b)(1).

    The difference is significant in that 135(b)(1) does not include the “in an application filed after the application is published” clause. So, if the claim is in an issued patent, you have one year to copy that claim to provoke an interference–regardless of when your application was filed.

    If the claim is merely in a published application, the restriction in 135(b)(2) is only triggered if your application was filed after the publication date of the intering application. And 120 applies when determining the filing date of your application for purposes of 135(b)(2). So, if your effective filing date is not after the publication date of the interfering application, you never even get to the question of when the “claim is made.”

  37. 3

    The key words in the §135(b)(2) statute [below] apparently being ignored here are “only if the claim is made before 1 year after..” Is it possible that this Panel did not understand the intended and accepted meaning of “making” a claim and confused it with merely having prior pending specification support? It looks that way to me.

    I only skimmed the case, Paul, but I think you’re missing the point. The point is that the bar in 135(b)(2) doesn’t apply at all if the interference-provoking application was filed before the other application is published. The panel found that Ling’s second application, although actually filed in 2007, was effectively filed in early 2004, before the Loughlin application published.

  38. 2

    Paul, I had the very same reaction to this decision. Unless I am missing something, this may be one of the most fundamentally incorrect decisions from a panel in quite some time.

  39. 1

    This seems to me to be a shockingly incorrect statutory interpretation by this Fed. Cir. panel, and I have already sought for IPL interference experts and/or the PTO to seek reconsideration or en banc review. This decision seems to me to confuse:

    (1) the specification prior art date priority benefit of 35 USC §120 from a parent application [which could be properly used in a reexamination], with
    (2) the belated claim-presenting bar of 35 USC §135(b)(2),* which is intended to prevent delayed surprise interference litigation by someone belatedly presenting claims to an invention it had never claimed before, that someone else had previously claimed and thought that they owned.

    This statute is also a bar to normal ex parte application presentation of claims from someone else’s patent application or patent belatedly. In re McGrew, 43 USPQ2d 1633 (Fed Cir. 1997). So this is not just an interference issue. Even after the AIA goes into full effect this statute will continue to apply to more than a million pending applications and all the interferences that will only be gradually eliminated by the AIA over several more years. But I fear that most of the patent bar has ignored this decision so far, not realizing this.

    35 USC §135(b) was clearly intended to prevent the situation here. Namely, someone sees a patent or patent application of another claiming something that they have never claimed, but could have, with 112 support buried in their specification, but delays for more than a year even presenting an interfering claim in an application and then also belatedly seeking an interference of a previously unclaimed invention, which will catch the other party and the public by complete surprise, since no prior search could have ever found that asserted ownership of the invention by another.

    The key words in the §135(b)(2) statute [below] apparently being ignored here are “only if the claim is made before 1 year after..” Is it possible that this Panel did not understand the intended and accepted meaning of “making” a claim and confused it with merely having prior pending specification support? It looks that way to me.

    I did not see anything in this decision indicating that any potentially interfering claim was ever presented in any application by this party until considerably more than a year after the other party had published the same claim in their application?

    This is not in the best interests of business, by increasing uncertainty for product marketing and R&D investments, which was a key reason for interferences being gradually eliminate by the AIA. Nor are unnecessary APJ time consuming additional interferences in the best interests of the USPTO.

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