Ambiguous Incorporation-by-Reference Language Breaks Continuity Link

Reversing the Board of Patent Appeals and Interferences (the Board) of the U.S. Patent and Trademark Office, the U. S. Court of Appeals for the Federal Circuit held that a patent application involved in an interference was not entitled to the filing date of an earlier filed application because of ambiguous incorporation-by-reference language use in intervening applications.  Hollmer v Harari, Case No. 11-1276 (Fed. Cir., Jun. 7, 2012) (Prost, J.).

This decision represents the second of two appeals.  In the first appeal, Harari v. Hollmer (Harari I) (IP Update, Vol. 13, No. 5), the Federal Circuit ruled on the issue of whether the earliest filed application in a chain of applications (the parent application) properly incorporated subject matter by reference.  In Harari I, the Court explained that it was appropriate for the parent application to identify, for the purposes of incorporation by reference, another co-pending, unrelated application by title, inventors and specific filing date if such information was sufficient to identify the unrelated application at the time the information was presented, e.g., at the initial filing stage.  In further explaining Harari I, the Court stated that the “proper standard by which to evaluate the sufficiency of incorporation by reference language, at this stage of the proceedings, is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented.” (Emphasis in the original.) 

In this second appeal, however, the Court decided that the Harari I standard of a “reasonable examiner” did not apply because the issue being address in this case was not the propriety of the identification of an incorporated reference at the “initial filing stage.”  Rather, the standard applied by the Court in this case was whether the intervening patent applications maintained the continuity of disclosure using a reasonable person of ordinary skill in the art standard.  Under this standard, the Court held that the Hollmer’s application was not entitled to the filing date of its parent because the incorporation by reference language used in two intervening continuation applications was ambiguous as to the identification of the incorporated reference. 

Practice Note:  When incorporating another application by reference, be sure to identify the incorporated application by serial number in the specification of the host application.  If the serial number is not available at the time of filing the host application, identify the incorporated application by title, inventor(s) and filing date,  and make sure to amend the host application to include the serial number when it becomes available.  Be sure to then properly identify the incorporated application in any subsequently filed application to maintain continuity.