Filing a continuation on the day the parent issues — co-pending??

“We therefore leave for another day whether filing a continuation on the day the parent issues results in applications that are co-pending as required by the statute.”

Those were the ominous words at the end of Judge Moore’s recent opinion in Encyclopedia Britannica, Inc. v. Alpine Electronics of America, Inc. et al., 2009-1544 (Fed. Cir. June 18, 2010).  The defendants in the case argued that a continuation application filed on the same day that the parent application issues is not co-pending with the parent; therefore, the requirements of 35 USC §120 are not met so as to entitle the continuation application to the filing date of the parent application/patent.  The argument asserted the holding of a Supreme Court case (the United States v. Locke, 471 U.S. 84 (1985) case) where the Court addressed the meaning of the word “before” when used in conjunction with a date in an unrelated statute.  Since §120 requires the filing of a continuation application “before” the patenting of the parent application, a same day filing would not be before the patenting of the parent application (according to the defendants). [Listen].

The plaintiff-appellant asserted the practice of the Patent Office in recognizing continuation filings on the same day that the parent issues. [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here:  [Read].

Update:  You can read the Supreme Court’s opinion in United States v. Locke, 471 U.S. 84 (1985) here: [Read].

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