Federal Circuit reverses district court’s decision that a continuing application filed on the same day as the parent’s issuance loses benefit under 35 U.S.C. §120

| July 6, 2016

Immersion Corp. v. HTC Corp.

June 21, 2016

Before Prost, Linn, and Taranto. Opinion by Taranto


The Federal Circuit confirmed the longstanding practice that for the purpose of claiming benefit under 35 U.S.C. §120, a continuing application can be filed either before, or on the same date as, the patent issue date of the parent application.


In 2015, Judge Andrews in the District of Delaware wrote a decision that caused a scare. He decided that, in order to benefit from the earlier filing date of a parent application under 35 U.S.C. §120, the later application must be filed at least the day before the parent issued as a patent. This decision had the potential of exposing tens of thousands of patents to invalidation, by any number of predecessor patents or published applications in their direct lineages.

Under 35 U.S.C. §120:

An application for patent for an invention disclosed . . . in an application previously filed in the United States . . . 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 . . . the first application or on an application similarly entitled to the benefit of the filing date of the first application.

At the time, Judge Andrews was presiding over a patent infringement dispute between Immersion Corporation (“Immersion”) and HTC Corporation (“HTC”), in which Immersion accused HTC of infringing three of its patents—U.S. Patent Nos. 7,982,720; 8,031,181; and 8,059,105.

All three patents claimed benefit to U.S. Patent Application No. 10/213,940, which was filed on August 6, 2002 as a continuation of U.S. Patent Application No. 09/487,737. The 737 application in turn was filed on January 19, 2000, and issued as a patent—also on August 6, 2002.



It was imperative that Immersion’s three patents be entitled to the 2000 filing date of the 737 application, because HTC was waiting to invalidate the three patents with a publication of Immersion’s own international application. The date of that publication was July 26, 2001, that is, more than one year before August 6, 2002.

HTC argued that patents issue automatically at 12:00:01 a.m. on their issue date and so, the 940 application filed on the same day that its parent application issued as a patent could not be “filed before patenting” as required under §120. The link between the 940 and 737 applications was therefore broken. Consequently, HTC argued, the earliest effective filing date for Immersion’s three asserted patents was August 6, 2002, i.e., the filing date of the 940 application, so as to turn the publication of Immersion’s international application into an invalidating prior art.

Judge Andrews agreed with HTC. In his decision, Judge Andrews held that a patent with a filing date on the same day as the patenting of the parent application was not considered “filed before patenting” within the meaning of §120, unless the patentee could prove otherwise in terms of hours, minutes, and/or seconds. As a result, Immersion’s 720, 181, and 105 patents were not entitled to the benefit of the parent’s earlier filing date, and were invalid as having been anticipated by Immersion’s own published international application.

On appeal, the Federal Circuit disagreed completely with the district court.

The Federal Circuit acknowledged that the statutory language of “if filed before the patenting” was ambiguous as to whether the filing must be at least one day, or could be one hour, one minute, or one second, before the patenting of the parent application.

However, the Federal Circuit considered the ambiguity to have been resolved by the history of court precedents, of the legislation of §120, and of agency practice at the USPTO, all of which consistently interpreted “before” to mean both “before” and “on the same day”.

The Federal Circuit referred to the Supreme Court’s decision in Godfrey v. Eames, 68 U.S. (1 Wall.) 317 (1864), in which the Supreme Court first established what came to be known as the “Godfrey’s rule” approving “same-day continuations”:

[I]f a party choose to withdraw his application for a patent . . . intending at the time of such withdrawal to file a new petition, and he accordingly do so, the two petitions are to be considered as parts of the same transaction, and both are constituting one continuous application, within the meaning of the law.

For decades that followed, courts and the USPTO consistently followed Godfrey’s rule, culminating in its codification as 35 U.S.C. §120 in the Patent Act of 1952. The USPTO subsequently published 37 C.F.R. §1.78 to interpret and implement §120, stating that “[a]n applicant in a nonprovisional application . . . may claim the benefit of the filing date of one or more prior-filed copending nonprovisional applications”. The USPTO clearly meant for the word “copending” to be inclusive. In MPEP §211.01(b), the USPTO provided that “it is sufficient for the later-filed application to be copending with [the prior application] if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.”

What the Federal Circuit seemed to find most disturbing was the disruptive effects of the district court’s decision:

The Supreme Court has long recognized that a “longstanding administrative construction,” at least one of which reliance has been placed, provides a powerful reason for interpreting a statute to support the construction…. Investment-backed expectations and reliance interests in patent law are often strong.

During appeal, amicus briefs were submitted in which the number of patents issued since 2000, and having a filing date that is the same as the issue date of the parent, was estimated to be at least 13,500. The magnitude of the public’s reliance on the longstanding practice that, for the purpose of claiming benefit under §120, “before” means “before” or “on the same day” is so tremendous that the Federal Circuit could see “no basis for denying the existence of a facially large disruptive effect were we now to repudiate the same-day-continuation policy”.


 A continuing application will receive benefit of a parent’s earlier filing date even when filed on the same day that the parent application issues as a patent. But, there are no meaningful benefits to doing so. It remains a far safer practice to file the continuing application well before the issue date.

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