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TAKEAWAY:  Failure to file a child patent application at least one day prior to issuance of a parent application may result in an ineffective claim of priority to the parent application which, in many cases, could result in invalidity of the child application.

A recent holding from the District of Delaware held that three patents filed on the same day of issuance of a parent application were not filed during the pendency of the parent application, and were therefore invalid in view of the parent application becoming prior art to the child patents. Immersion Corporation v HTC Corporation, Case No 12-259-RHA. In this case, the Defendants argued that since the three patents in question were filed on the very same day the parent application issued as a patent, they were not filed “before” their parent issued, as required by 35 U.S.C. § 120. In support of their argument, the Defendants noted that the USPTO automatically issues patents at 12:01 a.m. on their issue date and, as such, the three applications could not have been filed “before” issuance that day. Plaintiffs countered by citing the USPTO’s MPEP, which states that “it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date . . . that the patent issues on the prior application.” MPEP § 211.01(b)(I)(2014). In his opinion, Judge Andrews was not persuaded by the Plaintiff’s reliance on the USPTO’s interpretation of the statute. Judge Andrews held that the USPTO was not entitled to Chevron deference, noting that 35 U.S.C. § 120 uses the word “before,” which he reasoned is neither silent nor ambiguous regarding when a child application must be filed. Judge Andrews did not find any evidence corroborating the Defendant’s assertion that patents issue automatically at 12:01 a.m., but nevertheless ruled that Plaintiff had not met its burden to prove entitlement to an earlier priority date by filing its three applications before any such automatic issuance.