When should incorporation by reference language be taken care of?

Tsuyoshi Nakamura | July 11, 2012

Hollmer v. Harari

June 7, 2012

Panel:  Prost, Mayer, O’Malley.  Opinion by Prost


During the interference proceedings, Harari relied on the disclosure of 07/337,579 (‘579 application) which had been originally incorporated by the earliest 3rd great grandparent application 07/337,566 (‘566 application) of the subject application 09/310,880 (‘880 application).  The ‘566 application included the disputed incorporation statement and had been abandoned.  Two intervening applications copied the same statement and had been patented.  The subject application (‘880 application) included the copy of the statement, but Harari corrected the incorporation statement by preliminary amendment which, according to Hollmer, was new matter because it would newly introduce the disclosure of ‘579 application.  CAFC decided for Harari by applying the relaxed “reasonable examiner” standard (Harari I, 602 F.3d 1348).  However, Harari was not allowed to claim the benefit of the filing date of the ‘566 application because CAFC found that the intervening applications in the chain leading back to the earlier ‘566 application did not comply with the written description requirement due to the ambiguous incorporation statement by applying the strict “person of ordinary skill” standard.

本件は、米国特有の”incorporation by reference”プラクティスに関するものである。インターフェアレンス手続において、Harariは最先の出願(566出願)が”incorporation by reference”によって引用した米国出願(579出願)の開示内容に依存した。566出願は不十分な”incorporation by reference”の記述を含んでいたがそのまま放棄された。566出願の出願日の利益を主張する出願がその後5代に渡って続き、全ての出願は当該不十分な”incorporation by reference”の記述をコピーしていた。Harariは5代目の本願(880出願)を予備補正して”incorporation by reference”の記述を訂正したが、2代目と3代目の中間の出願はそのような訂正を経ずに特許になってしまっていた。本願に関する予備補正が新規事項の追加になるか否かの争いについて、CAFCは、ゆるやかな「審査官の観点」の基準を適用して予備補正が適切であると判断した。一方、本願が特許法第120条の利益を享受して最先の出願日に遡るためには全ての中間の出願が” written description requirement”の要件を満たす必要がある。この要件が不十分な”incorporation by reference”によって妨げられるか否かの争いについて、CAFCは、より厳しい「当業者の観点」の基準を適用して第120条の利益を認めなかった。

[実務上の指針] 最先の出願日に遡るためには、その間にある全ての中間の出願を補正して適切な”incorporation by reference”の記述を含むようにしておくことが必要。


The ‘566 application cited the co-pending ‘579 application, which was filed on the same day, by identifying the title of the invention, filing date and inventor names.  Specifically:

Optimized erase implementations have been disclosed in two copending U.S. patent applications…one entitled “Multi-State EEprom Read and Write Circuits and Techniques,” filed on the same day as the present application, by Sanjay Mehrotra and Dr. Eliyahou Harari. The disclosures of the two applications are hereby incorporate by reference

37 CFR 1.57(b) provides that an incorporation by reference must…clearly identify the referenced patent, application, or publicationMPEP 608.01(p) provides that a citation of a patent application by attorney docket number, inventor name, filing date and title of invention may sufficiently describe the document, but even then correction should be made to specify the application number.

Issue I: Is the preliminary amendment correcting the incorporation statement new matter?

The subject application (‘880 application) contained the same incorporation language copied from the ‘566 application.  Harari corrected the incorporation statement by preliminary amendment to refer to the ‘579 application by serial number and filing date.  The CAFC indicated that, at the initial filing stage (preliminary amendment), the proper standard to evaluate the sufficiency of incorporation by reference language is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented (reasonable examiner standard).  The reasonable examiner, who had the benefit of the transmittal sheet and the preliminary amendment, would understand that the incorporation statement referred to the ‘579 application.  Thus, the preliminary amendment is not new matter (Harari I, 602 F.3d 1348).

Issue II: Does the “reasonable examiner” standard also apply to evaluating the written description requirement for intervening applications?

The intervening applications contain the same incorporation language copied from the ‘566 application but, unlike the ‘880 application, were never amended to refer to the ‘579 application by serial number and filing date.  The Board of Patent Appeals and Interferences applied the “reasonable examiner” standard and found for Harari that the ‘880 application could enjoy the benefit under 35 USC §120.

The CAFC reversed.  It is well settled that, to gain the benefit of the filing date of an earlier application under 35 USC §120, each intervening application in the chain must comply with the written description requirement of 35 USC §112.  Thus, ultimate issue is whether the “reasonable examiner” standard also applies for determining if the intervening applications sufficiently incorporate the ‘579 application by reference such that they satisfy §120’s continuity requirements.

It is the underlying issue that provides the framework for resolving the incorporation by reference question.  For example, when the ultimate question implicates the understanding of a person of ordinary skill such as determining the written description requirement question, the CAFC has reviewed the incorporation statements from the person of ordinary skill view point.

To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003).  In other words, the “reasonable examiner” standard applies to a narrow circumstance when an application is at the initial filing stage and the examiner is evaluating an amendment that clarifies ambiguous incorporation by reference language.

Determining the validity of an issued patent including the disputed incorporation by reference statement, the proper standard is whether a person of ordinary skill would understand the application as describing with sufficient particularity the material to be incorporated (“person of ordinary skill” standard).

Applying the correct standard, the disputed language in the intervening applications does not “identify with detailed particularity what specific material is incorporated” to a person of ordinary skill.  The ‘579 application was not filed on the same day as those intervening applications and at least two other applications were co-pending with the intervening applications, by the same inventors with the same title.  Thus, on its face, the incorporation language does not lead a person of ordinary skill to the ‘579 application.


In order to make sure that a later-filed continuation application can enjoy the benefit under 35 USC §120, each intervening application in the chain (leading back to the earliest application) should take care of “incorporation by reference” language.

37 CFR 1.57(g) provides that an incorporation of material by reference may be amended within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. MPEP 608.01(p) states that, after the application has issued as a patent, applicant may correct an improper incorporation by reference in the patent by filing a reissue application. Correcting an improper incorporation by reference with a certificate of correction is not an appropriate means of correction because it may alter the scope of the claims.

Full Opinion


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