Patent Portfolio Audits and Priority Claims - The Front Page Priority Data is Not Relevant, at least in the Eyes of the USPTO (1)

I.     Introduction

      Upon auditing an IP portfolio transferred to my firm, I noticed that certain U.S. patents had the correct priority claims on the front page of the issued patent, and did not have the correct priority claims in the first paragraph of the specification! That raised several questions including whether the priority claims were valid, whether and how to correct the priority claims, and how the inconsistency in the front page and the specification arose. I address these questions below.

II.    Some Relevant Law

      35 USC 120 requires the specification to contain a specific reference to a prior filed application for a patent to be entitled to priority to the earlier U.S. application. 37 CFR 1.78 imposes additional formal requirements required by the USPTO in order for the USPTO to recognize the priority claim. Specifically, 37 CFR 1.78 requires that the priority claim appear in the first paragraph of the specification, and the USPTO interpreted 37 CCR 1.78 to require priority claims to plural applications to show the chain of co-pendencies and priority claims between the pending application and all of the applications to which priority is being claimed. See the USPTO's notice signed 2/24/03 by then Assistant Commissioner for Patent Steve Kunini, entitled "Claiming the Benefit of a Prior Filed Application Under 35 USC 119(e), 120, 121, and 365(c)."

III. Observed Facts and Inferences How the Discrepancy Between the Front Page and First Paragraph Priority Data Occur
      Discrepancies between the front page of an issued U.S. patent and the specification appear for the following reasons. The applicant files an amendment to the first paragraph of the specification after the application was filed. The priority claims listed in the inventor(s) declaration differed from the priority claims in the first paragraph of the specification. The priority claims in the specification did not appear in the first paragraph of the specification. The applicant requested correction of an OFR (Official Filing Receipt) that did not correctly reflect the priority claims, but the applicant failed to follow up when the USPTO still got it wrong.
      Why did the content of the inventor(s) declaration matter? Because in many instances the USPTO transcribed the data from the inventor(s) declaration into the USPTO database (and that data appears in PAIR) instead of looking at the first paragraph of the specification.
      Why did post application filing date amendments to the priority claim matter? Because the USPTO apparently did not add the revised priority claims to the USPTO's database of priority claims, even though it entered the amendment in the file of the application.
      Now back to the question of whether the priority claim is valid. At least insofar as the USPTO is concerned the priority claim of such a patent is not valid. According to an email I received upon posing this issue to a responsible official in the USPTO:

      Without looking at the specifics of your application identified below -- To comply with 37 CFR 1.78, the domestic priory claim must be in the first sentence of the specification or ADS. The Office's long standing guidance as discussed in the MPEP is that inclusion in the declaration does not meet the requirements of 35 USC 120 (or 37 CFR 1.78). There is probably also some discussion in the 1997 rule making materials establishing 37 CFR 1.76 (application data sheet).
      The filing date is not relevant.
      How we [sic; the USPTO] print the application is not relevant.
      The filing receipt is not relevant.
      First, we key in the information from any document that people give us so that we can assign the earliest possible projected publication date. Second, even if we did not use the information from the transmittal letter, unsigned declaration, etc., applicants ask for "corrected filing receipts" to add inventor names, domestic and foreign priority information, and sometimes we give "corrected filing receipts" to add the information that they ask for, even if there is no oath naming the person as an inventor or first sentence of the spec/ADS that includes the domestic priority information, or oath that includes the foreign priority claim.
      Thus, such patents are defective. Whether a Court would come to the same conclusion regarding the statutory requirement is another matter. However, the position of the USPTO is sufficiently important to warrant correction of the patent, if possible. The remaining question is how to correct, if in fact the error is correctable.
      The least expensive mechanism to correct the defect is via a COC (Certificate Of Correction). Case law authority did not specifically address whether the USPTO would issue a COC in this fact pattern. However, in at least a few cases in which I explained all relevant facts in a request for a COC, and pointed out that addition of priority claims could not affect the examiner's determination that claims were patentable, the USPTO has granted the requests.
      There are of course factual issues regarding whether the applicant previously knew of the defect, and to what applications the applicant actually intended to claim priority. However, at least in the cases where the priority defect was unintentional error, the defects are likely to be correctable by requesting entry of a COC.

IV.    Conclusion

      When reviewing issued patent priority data, check the first paragraph of the specification, not just the front page data!

Date/Time: October 17, 2004 (2:06pm)
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1. All rights reserved, Richard Neifeld, President, Neifeld IP Law, PC. See