Same-day continuation patent applications okayed

On June 21 2016 in Immersion Corp v HTC Corporation the Federal Circuit approved the longstanding practice of same-day continuation filings in the United States. The district court had held that the Patent Act requires continuation applications to be filed no later than the day before a patent issued in a parent application – an approach that could have invalidated tens of thousands of otherwise valid patents. The appellate panel affirmed the interpretation that the US Patent and Trademark Office (USPTO) has followed for several decades, which permits a continuation application to be filed on the same day that the patent issues in the parent application.

US patent law allows for the filing of continuation applications, which have the benefit of an earlier ‘parent’ application's filing date for priority. This has obvious benefits in a first-to-file system and shrinks the universe of prior art that can be used to determine patentability. A key condition for continuity under Section 120 of the Patent Act is that the continuation application be "filed before the patenting" of the parent application.

Starting with the statutory language, the Federal Circuit noted that the statute does not compel – although it could support – requiring filing a continuation on the day before the parent patent issues. However, the historical practice was decisively in support of same-day continuation filings. The Supreme Court approved same-day continuations in 1863 and the 1952 Patent Act – which introduced Section 120 – has broadly been considered a codification of existing practices.  Critically, the USPTO has interpreted Section 120 to allow same-day continuation filings since that time. In light of this "longstanding administrative construction", the court was justifiably reluctant to disturb more than 50 years of public and agency reliance on the legitimacy of same-day continuation filings.

The patent community can now breathe a sigh of relief and return to business as usual.