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!