Details Details: Defective Priority Claim Means No Priority Claim

Guest Post by Lisa Adelson

In Medtronic CoreValve LLC vs. Edwards Lifesciences Corp. (Jan 22, 2014), the Federal Circuit gave a gentle reminder to all U.S. patent practitioners (and a not so gentle reminder to Medtronic CoreValve) that patentees, as the parties in the best position to have intimate knowledge of their invention, will be held accountable for the accuracy and completeness of their disclosure, even down to the minute details of a priority claim.

In Medtronic, the Federal Circuit took on the issue of whether omission of reference to a priority application in an application forecloses a later right to file a subsequent application claiming through to the earliest priority application. For ease, and by way of example, the Federal Circuit in essence has stated today that if Application B claims priority to Application A, it must say so clearly and with all applicable details. More to the point, and much to Medtronic’s disappointment, if Application C claims through Application B back to Application A, not only must Application C say so, but Application B must also have said that it claimed through to Application A, and so on.

While the Federal Circuit’s pronouncement today is not a new concept to most of us and is in fact dictated by statute (see e.g. 35 U.S.C. § 119 and 35 U.S.C. § 120), Medtronic provides an important reminder to those of us who practice patent law that “the devil is in the details” and “an ounce of prevention is worth a pound of cure”!

Have a patentable day!

9 thoughts on “Details Details: Defective Priority Claim Means No Priority Claim

  1. The post ends with a comment about the requirement of 119 and 120. However, it should be clear that the Medtronic decision specifically only related to 120.

  2. Back in the day (before first to invent, and when these priority claims were made), the PCT publication would not be prior art until one year after publication. If would not have been published until 18 months after filing. The eventual patent would expire twenty years after the earliest priority date claimed. Dropping the priority claim could thus provide an additional 30 months of patent term. An ill-advised move, unless you are omniscient and know that there is no intervening prior art.

  3. The gap in the priority claim may have been intentional, if the claimed subject matter was supported by CIP material only, so that a complete priority claim would have served to limit patent term but would not have served to provide priority. It is a burden to figure out what was intended, so I think it is fair to stick the patentee with the priority claim he presented, rather than the priority claim he intended to present, or wished he had presented (after he sees the intervening prior art).

  4. More to the point, and much to Medtronic’s disappointment, if Application C claims through Application B back to Application A, not only must Application C say so, but Application B must also have said that it claimed through to Application A, and so on.

    Chained priorities? Yet another oddity of US law?

  5. While I agree that the law here is settled, it certainly doesn’t seem like a fair result to kill this patent because the attorney filing the application messed up the priority listing. It’s not as if the public had no idea there was a priority chain going back to 2000. The priority chain was there, just missing a few links. Edwards is getting away on a technicality. (to the trolls- yes, I know this wasn’t the first or the last time technicalities mattered in the law)

    You do have to give Medtronic credit for making an argument, quixotic as it was. Maybe instead of getting their money from Edwards, they can get it from Knobbe Martens’ malpractice carrier.

    1. The point Michael is that there is no chain if you are missing the links.

      The option (odd but unmistakably there) is that an applicant (for whatever reason) can choose not to lay a claim of priority to an earlier filing.

      While I can see no good reason for doing so, the fact that it can be done means that there must be some difference.

      1. Agreed, Anon. And, of course the biggest reason to forego a priority claim, at least within 1 year of an original filing (before the plague of prior art sets in), would be to lengthen the patent term of a utility patent. Risky, and infrequently used as it may be, patent applicants are still free to play the ponies!

      2. “… an applicant (for whatever reason) can choose not to lay a claim of priority to an earlier filing..”

        When a so-called continuation-in-part are involved, you may be better off not claiming priority, if the prior application has not yet been published. Section 103(c) is a handy little provision.

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