Addressing the issue of the priority date of claims in a continuation-in-part (CIP) application, the U.S. Court of Appeals for the Federal Circuit ruled that the burden of proof ordinarily should rest with the party claiming priority to the earlier priority date, unless the Patent Office has previously determined otherwise. PowerOasis, Inc. v. T-Mobile USA, Inc., Case No. 07-1265 (Fed. Cir., April 11, 2008) (Moore, J.).
A CIP application is an application filed during the lifetime of an earlier non-provisional application that "discloses and claims subject matter not disclosed in the prior application." Generally a CIP adds at least one claim that relies, for support, on new matter first presented in the CIP application. Typically a CIP application will contain a mix of claims, some of which are only entitled to the actual filing date of the CIP application, while others may be entitled to the effective filing date of the earlier application. In this case, the district court found that PowerOasis' asserted patent claims were only entitled to the filing date of the CIP application. On that basis, the claims were held invalid as anticipated by a prior third-party public use and sale. PowerOasis appealed.
PowerOasis argued that because its patent enjoyed a statutory presumption of validity, the district court erred in allocating the burden of proof on PowerOasis to prove it was entitled to claim priority back to its original application for the claims in issue. The Federal Circuit disagreed, concluding that although an issued patent is entitled to a presumption of validity, that does not include a presumption that every claim in a CIP application is entitled to the earliest effective filing date. The Court noted that as a matter of course in prosecution, the U.S. Patent and Trademark Office (USPTO) usually does not make determinations regarding the priority date of each individual claim because such a determination is time consuming and complex. However, in the event that the USPTO does actually determine the priority date of a claim during prosecution, then the determined date would be entitled to a presumption of validity.
Practice Note: Recognizing that a rejection based on an intervening reference may be overcome by demonstrating support for the claim in the earlier application, patent examiners typically attempt to avoid the issue of claim-by-claim priority determination by searching only for references that predate the earliest possible priority date i.e., they avoid relying on "intervening" references (dated between the earliest possible priority date and the CIP application filing date). Occasionally, an examiner will directly address the priority date issue in a CIP application by invoking 37 C.F.R. 1.105(viii) to require an applicant to expressly state a priority date for each pending claim in a CIP application and cite support in the earlier application for every claim which the applicant contends is entitled to the earlier priority date.
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