Failure To Perfect Claim To Priority During Pendency Of First-Filed U.S. Patent Application

In Justus v. Appenzeller, 177 USPQ 332 (POBPI 1971), the majority of a three-member panel of the Board of Patent Interferences ruled¹ that Appenzeller was not entitled to the benefit of his foreign priority date for his second-filed U.S. patent application because he had failed to perfect his claim to priority by filing a certified copy of his German application during the pendency of his first-filed U.S. patent application.² According to Examiner of Interferences Williams: 

[T]he . . . language of Section 119 is clear and explicit. We believe that the plain language of that section referring to "An application", which may be accorded the benefit of an earlier filing date in a foreign country, and referring to "the application" in this country, which is required to be "filed" within twelve months, relates only to the one and the same application. Thus, in our view, the U.S. application during the pendency of which there must be compliance with the provisions of Section 119 in order to provide a basis for according "An application" the benefit of an earlier foreign filing date, is "the" one application which in fact "is filed" within the prescribed twelve month period. This section of the statutes in contradistinction to Section 120 says nothing about any benefits that may be secured based on "an application similarly entitled to the benefit of the filing date of the first application."³

Examiner of Interferences Capelli concurred in the award of priority to Justus but dissented from the ruling under discussion here on the grounds (1) "that 'the application' as used in 35 U.S.C. 119 should be interpreted as and was intended as, encompassing all continuing applications (35 U.S.C. 120) consonant with the philosophy expressed in Godfrey v. Eames, 1 Wallace 317, wherein 'two consecutive applications' were held to constitute 'one continuing application'"⁴ and (2) that, "if failure to comply with an explicit provision of 35 U.S.C. 119 can be corrected by filing a reissue application, (State of Israel, Ministry of Defense v. Brenner, 155 USPQ 486, affd. 158 USPQ 584) I cannot discern anything in 35 U.S.C. 119 which negates correction of a similar informality in any proper continuing application before a patent based thereon is issued."⁵

The majority's view was harshly criticized in Patent Law Perspectives,⁶ and it caused considerable consternation in the patent bar. This consternation was, however, allayed by the opinion of Acting Commissioner of Patents Tegtmeyer in In re Tangsrud, 184 USPQ 746 (Comm'r of Pat. 1973). In that opinion, Mr. Tegtmeyer denied a petition to extend the time for noting an appeal to the CCPA from an adverse decision of the Board of Appeals, which petition was filed solely to give the appellants time to file a certified copy of their foreign application during the pendency of their first-filed U.S. application before that application was abandoned in favor of a continuing application. Mr. Tegtmeyer denied that petition on the ground that filing the certified copy of the foreign application during the pendency of the first-filed U.S. application was unnecessary because:

The Board's ruling [in Justus v. Appenzeller] imports into . . . [35 USC 119] a limitation which is not there, namely that the language, "application for patent," means only the first filed application in a chain of copending applications. Such a limitation is considered to conflict with Congressional intent in enacting the second paragraph of 35 U.S.C. 119. As pointed out in the Revision Notes appended to Senate Report No. 1979, "[c]opies of the foreign papers on which the right of priority is based are required so that the record of the United States patent will be complete in this country." U.S. Code Cong. and Adm. News, 82d Cong., 2d Sess., 1952, vol. 2, p. 2413.⁷ That purpose would not be best served by filing the claim for priority and the priority document in an abandoned application.⁸ It is further noted that the Board's interpretation would foreclose any claim for priority under 35 U.S.C. 119 if the first-filed application is abandoned in favor of a continuing application within 6 months after the filing of the first-filed application.⁹

It is not the purpose of this comment to side with either the majority in Justus v. Appenzeller or with the Acting Commissioner in Tangsrud. Rather, it is the purpose of this comment to suggest that the Acting Commissioner's opinion in Tangsrud does not "overrule" the Board of Patent Interferences' decision in Justus v. Appenzeller because the Commissioner does not have authority over the actions of the Board when it is acting pursuant to its statutory authority. Accordingly, the Board's alternative holding (or well-considered dictum) is still the latest and most authoritative word on this controversial subject.

In Myers v. Feigelman, 59 CCPA 834, 455 F.2d 596, 172 USPQ 580 (1972), the Court of Customs and Patent Appeals (per Judge Rich) held that the Commissioner's decisions on petitions from primary examiner's decisions on ancillary-to-priority motions are reviewable both by the Board of Patent Interferences and by the Court. That is, the Court treated the Commissioner's review as, in effect, stepping into the shoes of the primary examiner and not binding on the Board. Similarly, in Nitz v. Ehrenreich, 557 F.2d 539, 190 USPQ 413 (CCPA 1976), the Court held a Commissioner's decision refusing to dissolve an interference on the ground of lack of interference in fact to be reviewable both by the Board and by the Court -- that is, not to be binding on the Board.

The thrust of Myers v. Feigelman, Nitz v. Ehrenreich, and similar cases¹⁰ is that, when the Board is acting in its statutory capacity,¹¹ its decisions are not reviewable by the Commissioner of Patents. Although not at issue in those cases, it should follow that the decisions of the Board are similarly not controllable by instructions from the Commissioner of Patents issued in advance.¹² It is submitted, therefore, that the Acting Commissioner's opinion in Tangsrud is not binding on the Board of Patent Interferences and that, accordingly, we are unlikely to have heard the last of Justus v. Appenzeller.

First published in the Journal of the Patent Office Society, volume 63 (1981), pages 59-62.

*.Of counsel, Baker &;McKenzie, Washington, D.C.

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Endnotes

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[1].In re Tangsrud, 184 USPQ 746 (Comm. of Pat. 1973), discussed infra, refers to the ruling as "dictum and not necessarily binding in other cases." 184 USPQ at 746. However, it is submitted that a better description would be that it was an "alternative holding," presumably made to complete the record for purposes of appeal. In any event, if it was dictum, it was obviously well considered dictum, for the majority's discussion of the issue is six columns long.

[2].Appenzeller never filed a "claim" for priority or a "certified copy of the original foreign application, specification and drawing" (35 USC 119) in his first-filed U.S. application. 177 USPQ at 337, fact 5. He filed a "claim" for priority in his second-filed U.S. patent application, which was a continuation-in-part of his first-filed U.S. patent application, during the pendency of his first-filed U.S. patent application, 177 USPQ at 337, fact 7, but he did not file the certified copy of his German application until after he had expressly abandoned his first-filed U.S. patent application. 177 USPQ at 337, facts 9 and 11.

[3].177 USPQ at 339; emphasis in the original.

[4].It may be noted that Appenzeller's second-filed U.S. patent application was a continuation-in-part, not a continuation, of his first-filed U.S. patent application, so that the two applications were hardly "one continuous application" for many substantive purposes.

[5].177 USPQ at 341; emphasis in the original. At least a partial answer to Examiner of Interferences Capelli's second point is that (1) a reissued application can only be obtained upon a showing that the "error" sought to be corrected occurred "without any deceptive intention", 35 USC 251, and (2) that the reissued application is subject to the intervening rights provisions of 35 USC 252. Note the criticism of In re Lambrech, 202 USPQ 620 (PTO Comm'r 1976), which permitted a patentee to obtain a certificate of correction inserting into the patent a reference to a grandparent application so as to obtain the benefit of its filing date under 35 USC 120, on the ground that "corrections made under the reissue provisions of the statute carry with them the intervening rights safeguards of Section 252, safeguards not available to corrections under Section 255." Pat. L. Persp. §A.14-137 at 138 (Dev. 1981). Such safeguards are, of course, not available where the correction is effected in a continuing application, although arguably they are unnecessary where the first-filed U.S. patent application did not mature into a patent.

[6].Pat. L. Persp. §A.3[6]-7 (Dev. 1973). It should be noted that the critical article in Patent Law Perspectives states that "both the parent and the c.i.p. . . . claimed the right of priority," id. at §A.3[6]-7, which is incorrect.

[7].Mr. Tegtmeyer does not explain his basis for resorting to legislative history to interpret 35 USC 119 without first dealing with the Board's assertion that "the . . . language of Section 119 is clear and explicit," an assertion which, if true, would normally preclude resort to legislative history to interpret the statute as intended to mean something other than what it appears on its face to mean.

[8].Mr. Tegtmeyer does not explain why "the record of . . . [a] United States patent will be [more] complete" if the claim for priority and the priority document are filed in a subsequently filed U.S. patent application rather than in the first-filed U.S. patent application. Both files will, of course, be available to the public upon issuance of the patent.

[9].184 USPQ at 746-47. The apparent meaning of the last sentence of the quotation is that, if the Commissioner exercised his authority under the second paragraph of 35 USC 119 to require that foreign priority documents be filed within some period "not earlier than six months after the filing of the application in this country" (an authority which he has not exercised), say within seven months of filing, and if the first-filed application were abandoned during the first six months after filing, say after five months, the applicant would have to file his certified copy even earlier than the Commissioner's non-existent rule required in order to obtain the benefit of 35 USC 119 for a subsequently filed application. This argument does not appear to be particularly persuasive.

[10].This line of cases in the Court of Customs and Patent Appeals is developed in more detail in Gholz, "Review of Decisions Striking Patent Applications for Fraud," 61 JPOS 52 (1979), at pages 53-56. But contrast Doyle v. Brenner, 383 F.2d 210, 211-12 n.5, 154 USPQ 464, 465-66 n. 5 (D.C. Cir. 1967), cert. den., 389 U.S. 1037, 156 USPQ 719 (1968), decided by the other court with intermediate appellate authority over the Patent and Trademark Office.

[11].According to 35 USC 135 (a):

The question of priority of invention shall be determined by a board of patent interferences (consisting of three examiners of interferences) whose decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved. . . . A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved from the patent. . . .

[12].Except indirectly by way of the issuance pursuant to 35 USC 6(a) of "regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office." Such regulations, of course, could not write Tangsrud into the law if the Court of Customs and Patent Appeals were to say that Justus v. Appenzeller was correctly decided, because then the regulations would be "inconsistent with law."