CIP Claims Have Various Priority Dates
Posted by: Bruce in Continuation-in-part, Validity, Written description, claims, tags: claims, Continuation-in-part, PowerOasis, ValidityThe only way to add substantive material to your patent application is to file a Continuation-In-Part and many people believe a CIP “inherits” the priority date of the parent. It does… up to a point. When a claim is based in whole or in part on the new material added in the CIP, the priority date for that claim will be the filing date of the CIP. PowerOasis, a company that tried to sue T-Mobile for infringement, found out that out the hard way. Not only did they lose the infringement battle, but the bulk of their claims were declared invalid as having been on public sale more than a year before PowerOasis’s CIP was filed.
PowerOasis’s initial patent covered a “vending machine” for supplying either or both 110V power and telecommunications access to travelers. Their invention was a solution for all those businessmen sitting on the floor at airports, just to be near an outlet, or balancing laptops next to “dataphones” (payphones with dataports). Basically they designed a box with a switched power outlet and a switched telephone line (for your dial-up modem), where the switches were controlled by a payment mechanism. And their original patent reflected this vending machine model. Over the next few years they filed a number of continuation/CIP applications through which they convinced the PTO, through some verbal jujitsu that I find incredible, to allow the elements of their “vending machine” to be distributed over a wide area and to include configurations identical to an ISP operating internet hot spots.
At some point, PowerOasis decided that anyone “vending” access to the internet on a pay-as-you-go basis was infringing their patents. An obvious big fish was T-Mobile. They had just one minor problem; It is undisputed that more than a year prior to filing the CIP that covered the allegedly infringing systems, T-Mobile’s MobileStar Network contained all of the same features that form the basis of PowerOasis’s allegation that the T-Mobile HotSpot Network infringed its patents.
PowerOasis tried to avoid summary judgment by pointing out that their issued CIP patent had a presumption of validity and that in any case the priority date for the CIP could be traced back to their original patent’s filing date.
The Court of Appeals for the Federal Circuit, CAFC, tossed out both these arguments. Firstly, the Court said, the presumption of validity afforded an issued patent only extends to material evaluated by the PTO. Prior public use, for example, is not usually investigated by the PTO. Thus, the Court said, the burden of proof (that their patent was valid) fell on PowerOasis’s shoulders, not on T-Mobile (to prove it invalid).
Secondly, the Court reinforced what we already knew; each claim has a priority date that corresponds to when the supporting specification material is filed. The dependent claims in the CIP that described the alleged T-Mobile infringement were based on the new material added in the CIP and could not rely on the filing date of the original patent.
Herein lies the difference between a continuation and a continuation-in-part. In a continuation application, no (substantive) new material is allowed so the added claims can all share the priority of the original application. In a CIP, new material may be added so each claim must be examined to see when it’s supporting material was filed; a CIP claim is given a priority date corresponding to the filing date of its supporting material.
While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
To take any other position opens the patent system to the grossly unfair practice of writing CIP claims that turn your competitors into infringers after the fact.
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