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PTO May be Enjoined, But Continuations Still Alive

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One day before the Eastern District of Virginia grappled with the PTO’s rulemaking authority under 35 U.S.C. § 120, Chief Judge Gregory M. Sleet issued another decision addressing the contours of later-filed applications. In its October 30th decision on invalidity, the Court rejected the assertion that one of several patents in suit could not claim the priority date of a 1988 parent application.

The underlying invention — a food product comprising a mixture of microorganism-based lipids and food material — disclosed a limitation that, according to the Court, matched the written description of the parent application. That the claim in issue and the specification did not mirror one another, however, is not dispositive for purposes of determining priority:

“[T]he court notes that whether a disclosure is limited or broad is of no moment in a written description analysis [under Section 120], as the only requirement of section 112 is for an applicant to provide a description that ‘reasonably conveys’ to one skilled in the art that the inventor was in possession of what is claimed as of the filing date sought.”

While the fate of the PTO’s campaign against unlimited filings remains unsettled, the Court here reminded us that the substance behind the later-filed application is secure.

Martek Biocsciences Corp. v. Nutrinova Inc., C.A. No. 03-896-GMS (D. Del. Oct. 30, 2007) (Sleet, J.)

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