The United States Court of Appeals for the Federal Circuit confirmed the practice of claiming the benefit of an earlier filed application using solely an application data sheet. E.I. du Pont de Nemours v. MacDermid Printing Solutions, L.L.C., Case No. 07-1568 (Fed. Cir., May 14, 2008) (Michel, J.).
On February 27, 2002, when it filed the application for the patent in question, E.I. du Pont de Nemours (DuPont) filed an application data sheet that stated: "[t]his application is a non-provisional of provisional application 60/273669 2001-03-06 WHICH IS PENDING." The application itself did not include a "related applications" section or the like. Thus, the only claim for the benefit of the provisional application was found in the application data sheet. The priority claim did not appear on the face of the published application or the issued patent. DuPont requested and was granted a Certificate of Correction to correct this error on the part of the U.S. Patent and Trademark Office (USPTO).
Later, when DuPont sued MacDermid for patent infringement, one of the defenses asserted by MacDermid was public use or sale of the invention more than one year before the critical data which was alleged by MacDermid to be February 27, 2001, one year prior to the non-provisional application filing date. In connection with briefing and a hearing on DuPont's motion for preliminary injunction, DuPont's trial counsel failed to raise the issue that the critical date was March 6, 2000, one year prior to the provisional application filing date. Two days after the hearing, DuPont submitted a letter to the court for the first time asserting March 6, 2000 as the priority date.
In response, MacDermid argued that the non-provisional application was not entitled to the benefit of the provisional application because DuPont did not use the "proper language" in claiming priority to the provisional application. MacDermid further argued that the filing receipt, published application and issued patent did not reference the provisional application, showing that the USPTO did not recognize priority to the provisional application.
DuPont was unable to convince the court that MacDermid's § 102(b) defense was without substantial merit and its request for a preliminary injunction was denied on that basis. DuPont appealed, the sole issue being whether the district court correctly held that MacDermid raised a substantial question of validity based on the uncertainty as to whether the non-provisional application was entitled to claim priority to the provisional application to the Federal Circuit.
The Federal Circuit reversed, finding that the court had abused its discretion in denying DuPont's preliminary injunction motion, noting that in light of the undisputed facts contained in the prosecution history, the non-provisional application was entitled to the filing date of the provisional application as a matter of law and that the reference to the provisional application in the application data sheet would lead a reasonable person to conclude that the applicant was claiming priority to an earlier provisional application.
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