Priority Claim Must Specifically Include the Entire Chain of Priority

by Dennis Crouch

Droplets, Inc. v. E*Trade Bank (Fed. Cir. 2018)

Droplets Patent No. 8,402,115 (interactive link delivery) is invalid as obvious unless it properly claimed priority back to its 1999 provisional application.  The Board found that priority had not been properly claimed — a judgment affirmed on appeal by the Federal Circuit.

The ‘115 patent (the patent at issue) was filed as an application in January 2009 and claims priority to U.S. Pat. No. 7,502,838 (filed November 2003) which itself expressly claims priority to the 1999 provisional via a separate utility patent (the ‘745 patent filed in June 2000).  The ‘115 patent also claims priority directly to the 1999 provisional, although the provisional had expired well before the 2009 file date.

Full Chain of Priority: The problem for the patentee, is that the patent does not expressly spell-out the full chain of priority. In other words, the patentee should have stated something like:

The present application is a continuation of allowed U.S. patent application Ser. No. 10/720,728, filed on Nov. 24, 2003 which has issued as U.S. Pat. No. 7,502,838, which is a continuation application U.S. application Ser. No. 09/599,382 filed Jun. 22, 2000, which has issued as U.S. Pat. No. 6,687,745 on Feb. 3, 2004, and which claims the benefit of Provisional Patent Application No. 60/153,917, filed Sep. 14, 1999.

Instead, the the patentee left-out the full chain (omitting the middle application):

The present application is a continuation of allowed U.S. patent application Ser. No. 10/720,728 … Priority is [also] herewith claimed  … from copending Provisional Patent Application No. 60/153,917, filed Sep. 14, 1999.

At an abstract level, the patentee has done enough to show its intent to claim priority through the chain of priority back to the 1999 application. In my view, the Statute seems to support what the patentee has done. 35 U.S.C. 120 (requiring only “specific reference to the earlier filed application”); see also Section 119(e)(1).

The Earlier Filed Application: The problem, though is that the statute is quite poorly written on the chain-of-priority point.  The statute allows for a priority claim to the filing date of a no-longer-pending “first application” if filed during the pendency of a later filed and still pending application that is “similarly entitled to the benefit of the filing date of the first application.”  The primary requirement in that circumstance is that the new application must include a “specific reference to the earlier filed application.” Note here, that the statute does not discuss further intermediary priority filings — only the “first application” and the later filed application that claims priority back to the first application.  We’re left without a definition of what Congress meant by “the earlier filed application.”  I would suggest three possible definitions: (1) the first application; (2) the later-filed application or (3) both the of these applications (the only two mentioned in the statute).  Federal Circuit holds here, however, that a fourth possibility is correct: (4) “the earlier filed application” means all applications in the priority chain, including all intermediate priority documents.

Let me note here, this decision is not new, but repeats prior Federal Circuit decisions, including Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, (Fed. Cir. 2014).  In Medtronic, the Federal Circuit particularly held that Section 120 “requires ‘a specific reference’ to each earlier filed application.”  The PTO also has regulations on point that require “specific reference to each prior-filed application to which the application seeks to claim priority … [including] a reference to each such prior-filed application, identifying it by application number … and the relationship of the applications.” see 37 C.F.R. § 1.78(d)(3).   See also Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345 (Fed. Cir. 2010).  Perhaps this is beating a dead horse, but I have quite a bit of difficulty following the Federal Circuit’s interpretation of the Statute, but it is the precedent.

Incorporation by Reference: The priority statement in the Droplets patent also included an incorporation-by-reference provision.  Here the Federal Circuit also held that the intermediate priority claims could not be made “specific” via incorporation by reference.

38 thoughts on “Priority Claim Must Specifically Include the Entire Chain of Priority

  1. 6

    On item to also consider in all of the ruminations below:

    The AIA extensively removed the phase “with deceptive intent” throughout the statute (purportedly) to ease the “onerous” penalty of improper inventor naming.

    Mind you, several people (me included) questioned why this had to be done – not only to be done, but to the level at which it was done.

    However one may look at it – IT was done.

    Is any of this type of imperfection (the inaptly claim of priority) any more egregious than the mis-named inventor scenario?

    Remember folks: this is not a case of nefarious “hide the ball.” The facts on the table here include that ALL items were incorporated by reference, thereby giving notice to any and all as to what to look for.

    Some have insinuated devious attempts to hide the ball.

    Those are not here.

    Some have insinuated that “looking at everything” would be too difficult.

    Again, that is not the situation here.

    If actual inventorship can get such generous treatment (in truth OVER-generous treatment), why is the particular facts presented here receiving such harsh views?

    1. 5.1

      What public policy purpose is advanced by saying that you cannot get a patent on an invention that was fully disclosed more than one year before your effective filing date? I would think that this is fairly obvious. There is a clear public policy in saying that you cannot patent the prior art, because to do so would not advance the art.

      1. 5.1.1

        Hi Greg.

        I don’t think she meant “killing it via prior art”. I think she meant “killing it by refusing to see the priority claim issue the way Dennis sees it”.

      2. 5.1.2


        That’s a bit of a strawman answer, and provides an entirely different context here.

        The incorporation by reference has ALL of the information already there.

        This is NOT rocket science. Heck, this is not even a shell game.

    2. 5.2

      Isn’t patent term 20 years from the date of the earliest-filed non-provisional priority claim?

      Under the priority claim as claimed by Droplets, Inc., this patent’s term based on priority claim runs to November 2023.

      Under a proper (full) priority claim, this patent’s term runs to June 2020.

      Maybe the public would like to know when this patent really expires?

      Of course, they could consult a patent professional, who’d probably figure out relatively quickly that Droplets made a mistake.

      1. 5.2.1

        So, do I see this right: on the face of the patent, the 20 year term runs to 2023 but, when one researches the chain of priorities relied upon as defences against attacks on validity of the claim, the 20 year term expires much earlier, in 2020.

        You shouldn’t encourage people to announce to the world in all seriousness, that their patents run till 2023 but then again, when validity is challenged, to pluck out of the PTO file an effective 1999 priority date that they overlooked to mention in the patent. Or can you?

  2. 4

    Nitpicky point: 119 deals with priority (under the Paris Convention), 120 deals with the benefit of the filing date of an earlier US application. They’re not the same thing.

  3. 3

    This is the type of decision that makes people hate lawyers. Absolutely clear what the intent was and even technically correct because of the inclusion by reference, but not following the letter of the law and a bunch of judges that want to limit the patent right in any way possible, so they violently strike at the patentee.

    1. 3.1

      It isn’t lawltardyers fault that the legislature drafted laws in a verboise nigh unintelligible jumble of madness.

    2. 3.2

      I take your point, but I am not sure that it is fair to blame lawyers (or, by extension, the courts).

      Section 120 was written back in 1952, before there was a PAIR. At the time that the statute was drafted, the only way that a member of the public looking at a patent could know that it had an earlier effective filing date was by reading the priority information within the four corners of the patent itself, and the only way that the PTO could know to print such information was for the applicant to put that information in the application materials. Therefore, the precedent that has grown up around §120 has had to be fairly strict about requiring the applicant to list an explicit chain of ancestry.

      Of course, nowadays if you read that line in the ‘115 patent and have any questions about what is the priority date, you could pull it up on PAIR. But this CAFC panel is obliged to follow the court’s own precedent, and that precedent grew up in a day when there was no PAIR. This panel is not really free to say “well, this is clear enough, and no harm no foul,” because that is not what the precedent requires.

      I suppose that Droplets could petition for reconsideration en banc here, and argue that the earlier precedent should be set aside as obsolete in view of the advent of PAIR. The better way forward, however, would be for Congress to amend the statute to take account of the realities of modern, public, searchable databases run by the USPTO.

      1. 3.2.1

        Of course, if ever Congress were to find the time to get around to amending the patent statute, reform of §120 would not even be in the top ten of priority matters to be addressed by such statutory revisions.

      2. 3.2.2

        It would appear onerous to require interested persons to consider all documents incorporated by reference to determine a patent’s claim for priority, especially in this age of multiple, mindless, “just-in-case” incorporations. Anyhow, in this particular case, the outcome would be the same even if PAIR were controlling. Because the applicants never perfected the now-argued claim for priority, PAIR shows the ‘115 patent as claiming Section 120 priority only back to the parent application.


          Well, yes, if you check PAIR for the ‘115 patent, the only continuity data link you see goes to the ‘838 patent. On the other hand, if you click the link to the ‘838 patent, then the continuity data tab on the ‘838 page shows a link to the ‘745, so I think that you could make a case that if the precedent had developed in the days of PAIR, the court might have let this one slide. It is small work to trace the ancestry nowadays, even when the PAIR data on a give page is “incomplete” but easily available (as Droplets Inc. would have characterized it). It was not nearly so easy, however, when all of this precedent was first being formed.


            “It is small work to trace the ancestry nowadays. . .” Not sure about that, from your example. You’re considering a priority claim from another patent (‘838). Nobody is _required_ to claim the earliest possible Section 120 priority.


              Nobody is required to state “incorporated by reference” either.

              What point are you trying to make?


          If I mindlessly incorporate someone else’s patent by reference, to I get their priority claim too?


            DC., that’s a straw man, because falsely claiming an earlier priority date of some other inventor’s application will be attacked in any enforcement of that patent as inequitable conduct avoiding intervening prior art, with potential OED action against the attorney or agent doing that. Plus, potentially reducing the client’s patent term if the patent term statute [below] is literally applied.


              Paul: I was jokingly pointing out the error of an earlier posted suggestion that an incorporation by reference might be enough to maintain a priority claim.

    3. 3.3

      I am not so sure it was “absolutely” clear. It may be merely clear what the best priority claim should have been, but not absolutely clear what the filer intended. Given the obvious error of claiming priority directly to a long-expired provisional, perhaps the priority claim includes another mistake: Perhaps it was supposed to be a continuation-in-part, in which case the truncation of the priority claim would have been intentional (to avoid needlessly lopping off years of patent life, which is a mistake that occurred often after the shift to the twenty year term).
      Just a few years ago, someone filed a continuation a few months after the twenty-year term expired. It was absolutely clear what they intended. It was absolutely clear that what they intended was a mistake.

  4. 2

    The Declaration only claims priority to the provisional. Shouldn’t the PTO have dinged that priority claim, thereby triggering a correction by full recitation?

    1. 2.1

      Sure, an examiner who was more on the ball would have noticed that the priority claim does not properly reach to the provisional, and made a rejection over the Falco WIPO publication. Then the applicant could have corrected the error back during prosecution. Fundamentally, however, it is still the applicant’s job (even if it is also the examiner’s job) to notice such details and get them right.

      1. 2.1.1

        Fully agree – but sadly, this is more of a trap for the unwary than anything else.

        Do these types of “gotcha’s” really serve the public?

        (Heck – the incorporation by reference technically includes all the pertinent information)

      2. 2.1.2

        Greg, could the patent owner have corrected this error before or during its lawsuit by a certificate of correction or reissue?


          Don’t know about a lawsuit, but the PTO’s position is that the term of a patent is fixed when it issues. It would accept a correction only if the patentee established that it was the PTO’s mistake — i.e., the applicant met all the statutory and regulatory criteria for a proper claim for priority during prosecution.


            ? TP this would not require any correction of patent term – that now runs from the earliest claimed priority date, and failure to claim an intermediate would not affect that.


              To be precise, absent disclaimer, the patent term normally runs from the earliest _properly_ claimed Section 120 priority date. In this case, to no effect, the applicants appeared to claim Section 119 priority to a provisional application that was not co-pending. The patentee was granted Section 120 priority for a parent nonprovisional application. If the patentee here was later granted Section 120 priority back to the grandparent nonprovisional application, the patent term would be shortened. In other cases, a patentee might want to delete a claim to an earlier application and lengthen the patent term — also a no-no.


                ? TP, my understanding was that the 20 year [plus specified PTO delays] patent term runs from whatever earliest priority claim was claimed by the applicant, whether or not it was “properly” claimed, but I would be happy to be disabused of that recollection.

                1. Patent term runs “whether or not it was “properly” claimed” ?? I don’t think that rule would make sense. Suppose an applicant claims Section 120 priority to some unrelated application, with no common inventor and no common disclosure, in some other art, that was filed 25 years ago. The claim for priority would not be accepted by the PTO. But because of their “claim,” when the patent issues their term is kaput?

                2. Here’s the statute, and I don’t see any requirement in it for the priority claim to be proven valid [versus just being referenced] for limiting the patent term [unlike for prior art purposes.]:
                  35 U.S.C. 154 (a) (2) TERM.—Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
                  (3) PRIORITY.—Priority under section 119, 365(a), 365(b), 386(a), or 386(b) shall not be taken into account in determining the term of a patent.

                3. P.M., the patent term is changed, under the Term statute, “if the application contains a specific reference to an earlier filed application or applications under section 120. . . .” I probably shouldn’t have used the word “properly.” Either the application has a specific reference “under section 120” or it does not.

                  Even if an applicant purports to claim Section 120 priority to some unrelated application, with no common inventor and no common disclosure, in some other art, that was filed 25 years ago, it is not a specific reference to an earlier application under Section 120 because all the requirements of Section 120 and its implementing regulations have not been met. Similar to where an attorney files a paper during prosecution and calls it an “affidavit.” There are legal requirements for a document to be an affidavit, which do not include what an attorney may call it.

                4. T – you are over-reading again.

                  if the application contains a specific reference to an earlier filed application or applications under section 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.

                  does NOT mean that what is being referenced has had to have had all the “t’s” crossed and “i’s” dotted.

                  Just take the law as it is here: the operative phrase is “contains a specific reference.”

                  That’s it (and Paul Morgan has the better position here!)


          Granting that it is possible to distinguish this case from GD Searle LLC v. Lupin Pharma. or In re Janssen Biotech, those cases are still too close to the fact pattern of this case for me to feel confident that one could have corrected this in re-exam or reissue. It looks to me like once you go to issue with a given ancestry to your patent, you are stuck with that chain of ancestry for good and all.


            What if it’s not the applicant who wants to change the priority?

            I read an ex parte re-ex file history once where the PTO asserted that the earliest claimed priority application did not support the claims (of course with the purpose of using intervening prior art).

            The patentee duly filed a corrected priority claim, then argued the prior art and eventually came out with the claims intact.

            Changed patent term? I’m sure the patentee thought so.


            Thanks Greg. The Fed. Cir. has certainly also taken a hard-nosed attitude towards post-grant attempted curing of obviousness type double patenting with post-grant disclaimers.


              On the other hand, 35 USC 255 allows patent Certificates of Correction for applicant good faith mistakes “of minor character” that are not new matter and do not require re-examination. [But might it be subject to intervening rights limitations on pre-correction infringements?]

  5. 1

    Also, a good practice note not to overlook any correspondence from the USPTO; even the filing receipt.

    “During prosecution, two documents (a filing receipt and a bibliographic information sheet from the PTO) initially reflected a priority claim not only to the ’838 Patent, but also to the ’745 Patent and the ’917 Provisional. Prior to issuance, however, the PTO mailed a corrected filing receipt for the application that became the ’115 Patent, dated July 19, 2012, which listed the priority claim solely to the ’838 Patent. That document clarified the claimed priority date
    as follows: “This application is a CON of 10/720,728 11/24/2003 PAT 7502838.” J.A. 3298. Although the applicant filed a subsequent amendment to correct a
    typographical error in the claims, it did not amend the priority claim. The ’115 Patent issued on March 19, 2013.”

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