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Issue 05/40 | August 25, 2005
35 U.S.C. § 120
 The “Specific Reference” Requirement of 35 U.S.C. § 120 is Met by Proper Reference to a National Stage Application

The failure to specifically refer to a PCT application that corresponds to a national stage application will not deprive an applicant of priority under 35 U.S.C. § 120 or 37 C.F.R. § 1.78(a) where proper reference to the national stage application exists, because the national stage application effectively has the same U.S. filing date as the PCT application. Notwithstanding, specific reference to a PCT application in claiming priority under §120 is still advised.

In Broadcast Innovation v. Charter Communications, No. 05-1008 (Fed. Cir. Aug. 20, 2005), the federal circuit reversed a summary judgment grant of invalidity under §102(b) based on the improper determination of the patent’s priority date.

IO is the owner and Broadcast is the exclusive licensee of the ‘094 patent, directed to a distributed database system with applicability to data broadcasting and data casting communications media. The ‘094 patent is based on three Australian patent applications filed in 1992-93, later consolidated into a single international application (the PCT application) filed November 26, 1993. The ’094 patent did not include a specific reference to the initial Australian patent applications or the PCT application on its cover or in its specification. Rather, the ’094 patent itself merely stated that it was “a divisional of U.S. patent application Ser. No. 09/054,896, filed Apr. 3, 1998, now patented as U.S. Pat. No. 5,999,934, which is a continuation of U.S. patent application Ser. No. 08/436,336, filed Jul. 18, 1995, now patented as U.S. Pat. No. 5,737,595.” The district court based its summary judgment of invalidity on the absence of any specific reference to the PCT application on the face of the ’094 patent.

On appeal, the federal circuit reasoned that the specific reference requirement of 35 U.S.C. § 120 and PTO regulations 37 C.F.R. § 1.78(a)(2)(i) (1997) and § 1.78(a)(2)(iii)(2000) to earlier filed applications sufficient to qualify for priority was met by the applicant’s reference to the national stage of the PCT application (i.e., the application that became the ’595 patent):

  Where proper reference to a national stage application exists, no reference to the corresponding PCT application is required because the national stage application effectively has the same U.S. filing date as the PCT application. Therefore, under either version of the statute or the regulation, the reference in the ’094 patent to the ’595 and ’934 patents meets the statutory and regulatory requirements.

However, the “U.S. filing date” of the ’595 patent was not July 18, 1995; under 35 U.S.C. §363, the international filing date of the PCT application was also the U.S. filing date for the corresponding national stage application. Thus, the ’595 patent’s U.S. filing date was November 26, 1993, the filing date of the PCT application.

Accordingly, the district court decision invalidating the ‘094 patent based on a June 9, 1994 reference was reversed.

Please visit http://media.aplf.org/rm/20050824-public/Broadcast.pdf for a copy of the case for your reference.

To discuss these topics further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC,USA

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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