Patent Law

E.I. du Pont v. MacDermid Printing (Fed. Cir. 2008).

Rapid Appeal: The first thing that is surprising about this opinion is the quick decision pace. The N.J. district court denied DuPont’s preliminary injunction on August 13, 2007. The CAFC heard oral arguments on April 9, 2008 and then issued its precedential opinion on May 14, 2008. The decision time is well under half of the average in-process time for precedential CAFC opinions. Knowing that, it is not surprising that the opinion was written by Chief Judge Paul Michel and included CIT Judge Pogue sitting by designation. One of Judge Michel’s top priorities as Chief is to speed the appeal process and help avoid serious detriment caused by delay.

Summary: The CAFC vacated a lower court’s denial of preliminary relief — finding that the lower court had improperly refused to recognize DuPont’s patent priority claim to an earlier provisional application.

Claiming Priority: DuPont first filed a provisional application; followed eleven months later by a non-provisional utility application claiming priority using non-standard language. (“This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING.”) The issued patent did not reference the original provisional until after DuPont obtained a certificate of correction.  To complicate the matter, DuPont’s litigation counsel originally made “incorrect statements as to the priority date” — apparently forgetting the legal effect of a provisional application.

35 U.S.C. § 119(e)(1) provides four requirements to claim priority to a provisional application:

1. The provisional must adequately disclose the claimed invention;
2. The non-provisional must be filed within 12–months of the provisional;
3. Inventorship must overlap; and
4. The non-provisional must include a specific reference to the provisional.

Overlapping Inventorship: The specification of the provisional and non-provisional were identical. However, the provisional named only one inventor while the non-provisional named five. The defendant here argued that the provisional application should have been amended to properly identify the five inventors. On appeal, the CAFC rejected that argument in two steps: First, the appellate panel held that – as a matter of law – inventorship overlaps when both applications include at least one common inventor. Second, the panel re-affirmed that correction of inventorship for a provisional application is only necessary to establish an overlap of inventorship. See MPEP § 201.03. 

Specific Reference to the Original: DuPont used non-standard language in the non-provisional application data sheet (ADS) to claim priority to the provisional. On appeal, the CAFC held that there are no “magic words” required by MPEP § 201.11.  Rather, the standard is whether a “reasonable person reading the language … would have concluded that the applicant was claiming priority to an earlier provisional application.”  There is no question here that the language used by DuPont conveys the proper message.

Notice of PTO Error: The prosecution history included evidence that the PTO did not originally recognize DuPont’s priority claim. MacDermid argues that once an applicant is on notice of a PTO error — it should be required to ensure that the error is corrected before the application issues. In essence, MacDermid argues that the error in failing to reference the provisional in the originally issued application was DuPont’s error because the company was on notice of the PTO mistakes. On appeal, the CAFC rejected the notion that an applicant’s failure to diligently prosecute converts a PTO error into an applicant error.

“We hold that a lack of diligence during prosecution, at least under the facts of this case, does not convert a PTO error into an applicant error for the purpose of seeking a post-issuance certificate of correction. . . . It is, of course, desirable to have applicants correct the PTO’s mistakes in pending applications as soon as possible so that the correct information is reflected in published applications and issued patents. Nevertheless, nothing in the statute conditions eligibility for a certificate to correct PTO error on the applicant’s diligence in correcting the mistake, and the statute does not set any time limit for seeking such corrections.”

Vacated and Remanded