Don’t Be the Test Case — File Continuations Early

It has long been the practice of the USPTO to consider a continuation as co-pending with a parent case if it is filed up to and including the date the parent issues.  Manual of Patent Examining Procedure § 211.01(b)(I) (2014).  There has probably been a patent bar exam question on this.  Under administrative law principles, this is almost certainly entitled to Chevron deference (any patent attorney will tell you that it is ambiguous when on the day of issuance the patent “issues.").   Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837, 843 (1984).  In effect, the USPTO considers issuance to take place at the close of business on the day issued. This is a good resolution of an intractable question, and now we can move on, right?.

No, despite USPTO practice a district court might not give the MPEP the Chevron deference it deserves.  The best advice is don’t be a test case — file your continuation if you can the day before a parent issues, or preferably when the issue fee for the parent is paid.  If you do get embroiled in this issue, after you read Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), be sure to read Encyclopaedia Britannica, Inc. v. Alpine Electronics of Am., Inc., 609 F.3d 1345, 1352 (Fed. Cir. 2010)(avoiding the issue); MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978 (W.D. Wis. 2008)(siding with the USPTO) and Immersion Corp. v. HTC Corp., p.3 (D. Del, February 12, 2015)(Memorandum Opinion willing to look at time stamps).

`© Robert Rose 2015