CPLRG™ 0053 - Harari v. Hollmer - Apr. 14, 2010

Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (PROST, Bryson & Archer) Harari04192010

MAJOR ISSUES:  applications simultaneously filed; incorporation by reference; continuation application; preliminary amendment adding text of incorporated matter

COMMENT:  An applicant for a patent can file an application that incorporates by reference material from another filed application.   Later, in the originally filed application or subsequent continuing applications that rely on the original application, the applicant can add the actual text of the incorporated material without violating the prohibition on “new matter,” that is, without losing the original priority date benefit of the incorporated material.  However, the original incorporating statement must accurately identify the incorporated material, which, as this case illustrates, is a problem when the incorporated document is a simultaneously filed application that does not yet have an application number.

1.  An interference was between a junior party inventors’ application and a senior party’s patent.   U.S. Pat. App. No. 09/310,880; U.S. Pat. No. 5,828,601.  USPatNo5828601

2.  The applicant filed a continuation application, including a photocopy of a priority application and a preliminary amendment.  The preliminary amendment sought to add text and drawings from another application that the priority application had incorporated by reference.  The priority application had identified the other application by title and named inventors and as having been “filed on the same day as the present application.”

3. Later, in the interference, the PTO ruled that the continuation’s incorporation-by-reference language was ambiguous and insufficient because, inter alia, “present application” could refer either to the priority application or the present continuation application.  As a result, it held that the preliminary amendment added “new matter” and rejected the applicant’s claims for lack of written description support.

4.  The Federal Circuit reversed.  The language “present application” was context-specific, and the preliminary amendment provided an explanation of the context, making clear to a reasonable examiner that “present application” was the priority application.  The preliminary amendment was not new matter in relation to the priority application with its properly-incorporated material, but, rather, desirably eliminated potential confusion on what was incorporated.

CROSS REFERENCES.  On new matter and filing dates, see Chisum Patent Law Digest 3500, 3600; Chisum on Patents 11.04.

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