Is the legality of the PTO’s new rules to limit the number of claims foreclosed by Section 120 of the Patent Act?
Section 120 declares that a newly filed patent application “shall have the same effect” as a parent application so long as it is “filed before the patenting or abandonment …[of] the first application.” The statute includes two specific limitations: First, the newly claimed invention must have been properly disclosed in the original application by overlapping inventors. Second, the new application must specifically reference the parent.
Courts have primarily used Section 120 in determining whether to grant an early ‘priority date’ to a later filed application. The following quote from a recent CAFC case is typical:
“A patent application for an invention disclosed in a previously-filed application in a manner that satisfies all the requirements of 35 U.S.C. § 112 is entitled to the benefit of the earlier filing date.”
Go Med, 471 F.3d 1264 (Fed. Cir. 2006). The practice of filing continuations is old — and was sanctioned by the US Supreme Court in the 1863 case of Godfrey v. Eames.