Thursday, April 19, 2018

Droplets case clearly establishes the need to claim priority to get priority

The outcome

By statute, a claim for benefit of the filing date of an
earlier application must include “a specific reference to
[an] earlier filed application.” 35 U.S.C. § 120. We agree
with the Board that incorporation by reference cannot
satisfy this statutory requirement. Because the ’115
Patent expressly claims priority only to an immediately
preceding application, and not the provisional application
before that, the Board correctly determined that an
earlier-filed reference—an international publication with
the same specification—invalidated all claims of the ’115
Patent. We therefore affirm the Board’s decision finding
all claims of the ’115 Patent invalid as obvious.

CAFC 2016-2504, 2016-2602
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No.


Post a Comment

<< Home