by Dennis Crouch
Patent families generally require a chain of copendency. A later filed application may claim the same priority of an earlier-filed application so long as the later is filed while the earlier is still pending (not yet patented, abandoned, or otherwise terminated). This pending Supreme Court petition focuses on the situation where the earlier-filed application is amended to alter its priority claim — and asks What happens to the later-filed application’s priority claim.
Natural Alternatives v. Iancu (Supreme Court 2019)
I have been following the Natural Alternatives cases for the past several years. Natural’s patents cover a dietary supplement containing free beta-alanine.
1. A human dietary supplement comprising … beta-alanine [or amide thereof] that is not part of a dipeptide, polypeptide or oligopeptide.
U.S. Patent No. 8,067,381.
The particular issue in the pending petition here focuses on priority claims.
When is priority established for a patent application under the Trade-Related Aspects of Intellectual Property Rights (TRIPs) so that a Patent Owner can change priority in one application without affecting the priority of applications that have already established priority?
In this case, the patent at issue is the eighth in a long series of U.S. patent applications claiming priority back to an original UK application. For each patent in the chain, a new application was filed just before the prior patent’s issuance. In each instance, the new application also included a claim to priority to all of the prior applications in the chain.
However, just before the fifth application issued, its priority claim was amended to “delete its claim of benefit from the fourth through first applications in the series back to the 1996 British application’s filing date and, instead, claimed benefit solely of a provisional application filed in 2003.” Thus, for the fifth application, the applicant gave up the 1996 filing date in favor of the 2003 date — with the result of extending the 20-year timeline. The problem for the patentee here is that the reduced priority claim in the fifth application also limited the chain of priority for the sixth, seventh, and eighth patent.
In a reexamination, the USPTO rejected the eighth patent after finding that the first patent in the series counts as prior art. That holding was affirmed by the Federal Circuit. To be clear, although the sixth application correctly established priority when filed, the priority claim of the sixth was undermined when the prior-filed application (the fifth) was amended.
In its petition, the patentee argues that this “nunc pro tunc” result is improper.
The Federal Circuit’s holding means this disclaimer occurs even when the later-filed application was filed before the priority claim was disclaimed. This departure from the normal tenets of property law is illogical.
The traditional property law law discussed here is the “vesting” of the priority claim — that the patentee argues occurs as soon as it is properly claimed.
This is an interesting decision here that should certainly offer pause to anyone considering priority-claim schemes.