Priority Matters(!) in a Patent Portfolio Audit, and the Types of Priority Errors You May Encounter (1)

      By Rick Neifeld, Neifeld IP Law, PC. See

I.    Introduction

      If you conduct a patent portfolio audit, you need to verify the priority claims! Notwithstanding the substantive issues of claim scope, infringements, and invalidity based upon other factors, the formal matters of priority claims, inventorship, and title deserve careful review. This paper deals only with the issue of priority claims.

II.    Some Relevant Law

      A purely formal defect in a priority claim is something that may result in a defective patent until and unless the USPTO officially corrects the patent. "[F]or causes arising before its issuance, the certificate of correction is not effective." Southwest Software, Inc. v. Harlequin Inc., ___ F.3d ___, 56 USPQ2d 1161, 1171 (Fed. Cir. September 18, 2000, docket Nos. 99-1213, 1214). Therefore, the priority claims should be reviewed for defects during an audit of patents. However, be aware that priority claim data may be more complicated than you realize, and errors in the priority data may be more subtle than you realize!
      Moreover, continuity of disclosure and pendency are requirements for priority. Therefore, lack of continuity of disclosure in a chain of applications results in claims relying upon continuity of disclosure back to an earlier application to not be entitled to the early application's filing date. In re Wertheim, 646 F.2d 527, 536-37, 209 USPQ 554, 563, 564 (CCPA 1981).
      The next section identifies the types of errors I have recently encountered in an audit of a patent portfolio.

III.    Identified Errors of Which you should be Aware

      One type of error was a break in co-pendency. Why did this occur? Because the prosecuting attorney failed, when filing a continuing application (child application C) to properly update the priority claim in the child application so the it properly identified both the parent application (P) and the grandparent application (G). The actual priority claim appeared in the child application as "C is a CIP of G" when it should have read "C is a CIP of P which is a CIP of G." The grandparent was not pending when the child was filed such that the claim from child to grandparent lacked co-pendency, and therefore was invalid. This type of error is particularly hard to identify when, for instance, the parent or grandparent application was abandoned and the file for these applications are not readily available for review.
      Another type of error was the existence of a branched priority claim in a parent application, and a continuing application in which only one of the two branches of priority chain was updated to identify in the continuing application the parent application. For example, consider the case in which the grandparent G claims priority to A and B such that G's priority claims reads "This application is a CIP of A; and a CIP of B". In filing the parent P application, the priority claim to the second chain is inadvertently not updated resulting in the priority claim in P reading "This application is a CIP of G, which is a CIP of A; and a CIP of B...." Note that the claim in the second chain fails to include G in the chain. In some patents, the same type of branched priority claim error existed embedded in much earlier priority claims, such as when C was filed claiming priority through P to G.
      Another type of error existed in an application having a priority claim to an earlier filed application, but no priority claim existed to additional applications to which the earlier application claimed priority. For example, consider the child (C), parent (P), and grandparent (G) applications, and a claim in C to P, but not to G. However, review of P shows a claim to G. In this type of situation, the failure to claim the earlier priority was either intentional (in which case no correction is necessary or possible) or unintentional error. Whether error existed cannot be determined based upon the prosecution file history because that record does not identify applicant's intent.
      Another type of error existed in an application having claims to priority to a sequence of prior applications. However, the sequence of claims in the issued patent does not appear in one or more of the prior applications in the chain. For example, the issued patent may claim priority as follows: "This application is a CIP of P, which is a CIP of G" when in fact P did not claim priority to G. Regarding whether this error can be corrected, the same question of intent arises here as in the prior example. If P is issued and the error in P was unintentional, you may be able to correct via a request for a COC. If P is abandoned and the error in P was unintentional, you can still correct, but this requires a petition to have an amendment to add the priority claim to G in the abandoned P application entered in the abandoned P application. You may be required to pay the whopping the 1.17(t) fee required for a 37 CFR 1.78 petition in either case, but this burden is much more likely in the case involving an abandoned priority application.
      Some errors were identified by the existence of priority data on the front page and the first paragraph of the specification that differed from one another. You should review the data in the first paragraph of the specification and make sure that it, at least, is accurate. See 37 CFR 1.78. In this regard, a knowledgeable official in the USPTO recently responded in writing to my inquiry on this issue, to the effect that the USPTO policy is to not recognize priority identified on the front page of the published patent, in PAIR, or on an OFR; it only recognizes priority claims in the first paragraph of the specification. Therefore, at least insofar as the USPTO is concerned, it is the first paragraph of the specification that is legally significant.

IV.    Conclusion

      In conclusion, patent audits should include a review of the formal data (priority, inventorship, and title) because errors in this data are very important. Priority data in particular may include subtle errors that affect validity.

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