{"id":2557,"date":"2010-07-01T10:04:59","date_gmt":"2010-07-01T16:04:59","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=2557"},"modified":"2010-07-01T10:04:59","modified_gmt":"2010-07-01T16:04:59","slug":"co-pending-part-2","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=2557","title":{"rendered":"Co-Pending?? Part 2"},"content":{"rendered":"

As a follow up to the previous post, the issue of whether a continuation application\u00a0filed on the same day that the parent application\u00a0issues as a patent\u00a0has been dealt with before by at least one district court case.\u00a0 In Moaec, Inc. v. MusicIP Corp. et al.<\/span>, 568 F. Supp. 2d 978 (W.D. Wis. 2008), Judge Barbara Crabb (a judge highly respected at the Federal Circuit)\u00a0decided that the PTO’s practice of allowing same day filings was correct\u00a0in view\u00a0of historical practice.\u00a0 She wrote:<\/p>\n

Permitting the filing of a continuation application simultaneously with the patenting of the parent application gains further support from the history of the practice of filing continuation applications that led to \u00a7 120. The “continuing application practice was a creature of patent office practice and case law, and section 120 merely codified the procedural rights of an applicant with respect to this practice.” Transco Products Inc. v. Performance Contracting, Inc.,<\/em> 38 F.3d 551, 556 (Fed.Cir.1994)<\/span><\/a>. “The legislative history of section 120 does not indicate any congressional intent to alter the Supreme Court’s interpretation of continuing application practice.” Id.,<\/em> 38 F.3d at 557<\/span><\/a> (citing Godfrey v. Eames,<\/em> 68 U.S. 317, 1 Wall. 317, 17 L.Ed. 684 (1864)<\/span><\/a>). In Godfrey,<\/em> the Supreme Court addressed the continuing application practice and held that when a patent application was withdrawn and a new application regarding the same invention was filed the same day, the applications together constituted “one continuous application.” Godfrey,<\/em> 68 U.S. at 325-26<\/span><\/a>. Such reasoning supports the conclusion that the \u00a7 120 copendency requirement’s underlying purpose of permitting “one continuous application” is not frustrated by permitting a later-filed application to be filed on the same date that a patent issues on its parent application.<\/p>\n

Because the PTO’s interpretation of the \u00a7 120 copendency requirement is consistent with the statute and patent applicants are entitled to rely on it, the interpretation is due judicial deference. In accordance with the PTO’s Manual of Patent Examining Procedure \u00a7 201.11, plaintiff’s May 15, 2001 patent application, which resulted in the ‘886 patent, satisfies the \u00a7 120 copendency requirement because it was filed on the same date, May 15, 2001, as the patenting of its parent application. Therefore, I find that defendant has failed to establish its contention that plaintiff cannot obtain the benefit of the earlier filing date of the application that resulted in the ‘283 patent for failure to satisfy the copendency requirement under \u00a7 120.<\/p><\/blockquote>\n

The Moaec<\/span> case was settled last summer\u00a0while on\u00a0appeal to the Federal Circuit.<\/p>\n

You can read Judge Crabb’s entire decision here: [Moaec v. MusicIP<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

As a follow up to the previous post, the issue of whether a continuation application\u00a0filed on the same day that the parent application\u00a0issues as a patent\u00a0has been dealt with before by at least one district court case.\u00a0 In Moaec, Inc. v. MusicIP Corp. et al., 568 F. Supp. 2d 978 (W.D. Wis. 2008), Judge Barbara […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2557"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2557"}],"version-history":[{"count":3,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2557\/revisions"}],"predecessor-version":[{"id":2560,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2557\/revisions\/2560"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2557"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2557"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2557"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}