A continuation patent can be filed on the same day as the parent patent is issued to get the original patent date

Immersion Corp. v. HTC Corp.

Immersion Corp. was issued a patent on January 19, 2000 for mechanisms related to providing haptic feedback to users of electronic devices and was issued the patent on August 6, 2002. Meanwhile an international application was also filed by Immersion for related items that they intended to receive an effective filing date of January 19, 2000 as well.

The issue addressed by the court here was whether the language "filed before the patenting" required that the continuation application be filed at least one day before the patenting of the parent application or whether a same day filing was sufficient when both filing and patenting occurred on the same day. Ultimately, the Supreme Court found that the same day was in line with historic practices, and Congressional intent, and thus sufficient for receiving the original patent date for the continuation application.

In 2012 Immersion sued HTC for infringement of §120 of the Patent Act, which reads:

"An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section."

The District Court found for HTC reading the language of §120 to require the filing be at least one day prior and Immersion appealed. HTC relied on the relevant language of §120 that reads "if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application." However, the Appeals court did not find any unit of measure as to the specific date that the word "before" refers to. Instead the court looked at case history to determine that filings made on the same day could still receive the benefits of the earlier date.

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call the Law Offices of Roland Tong, at 949-298-6867 or email Mr. Tong at roland@rtlawoffices.com. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.