Wednesday, September 17, 2014

Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

The Federal Circuit decision Medtronic Corevalve v Edwards Lifesciences deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.


  1. Is this still an issue these days when the chain of priority claims is laid out in the ADR?

  2. You're right that under the AIA rules, the mechanism for laying out the priority chain is different. But you still have to get the entire priority chain right, in every app in the chain.

    So I suppose Ryan's comment about checking the *spec* doesn't apply to apps filed under AIA ADS rules. But it may well apply to ancestors in the chain, who may have been filed without an ADS.

    Also, Ryan's advice about not relying on Filing Receipts and PAIR data is still valid. The PTO still uses manual data entry in some situations and doesn't always populate from an ADS form.

  3. It's also not enough to just rely on checking the spec. A practitioner still needs to check HOW the priority claim was made and that it was done right. For example, say there is a long chain of applications. A parent application is allowed, and a child application is filed. For some reason, the priority claim was not properly made in the child. An Office Action was sent out but the filed response didn't address the rejections as it only attempted to correct the priority claim. Shortly thereafter, a grandchild application was filed that seemingly had a proper claim to the benefit of the priority of the original and child applications. However, after the grandchild application was filed, the Examiner sent the applicant a notice that since the child application's reply did not address the rejections made in the Office Action, the Examiner did not consider the reply to be a bona fide response to the Office Action and officially refused to enter the reply. The applicant didn't reply to the Examiner and let the child application go abandoned. The grandchild application was allowed and eventually issued as a patent. However, since the Examiner refused to enter the reply, the priority claim was never actually corrected. This left a break in the priority chain that isn't apparent to anyone simply by checking the spec to see if a pre-AIA priority claim is actually there.

    I'm not saying this is a typical situation, just that there are many, many, many different ways that a priority claim can get screwed up.