Incorporation By Reference Does Not Establish Priority

Federal CircuitDroplets, Inc. v. E*TRADE Bank, Nos. 2016-2504, 2016-2602, 2018 U.S. App. LEXIS 9895 (Fed. Cir. Apr. 19, 2018) (Before Dyk, O’Malley, and Wallach, J.) (Opinion for the court, O’Malley, J.).

In an IPR brought by E*Trade in response to an infringement suit by Droplets, the Board found that the Droplets ‘115 patent was invalid due to obviousness. The patent properly claimed priority to the ‘838 patent but also attempted to claim priority to an earlier ‘917 provisional patent application and an intervening ‘745 patent through incorporation by reference. The Board concluded that these priority claims were not proper, and the Federal Circuit agreed.

A claim for benefit of the filing date of an earlier application must include a specific reference to an earlier filed application. See 35 U.S.C. § 120. Because the ‘115 Patent expressly claims priority only to an immediately preceding application, and not the provisional application before that, the Federal Circuit explained that the Board correctly determined that an earlier-filed reference—an international publication with the same specification—invalidated all claims of the ‘115 Patent.

It was undisputed that the ‘115 Patent properly claims priority from the earlier-filed, copending ‘838 Patent and thus it was entitled to the benefit of the November 24, 2003 filing date of the ‘838 Patent. The question on appeal was whether the ‘115 Patent was also entitled to the ‘917 Provisional’s priority date by virtue of the language in the ‘115 Patent that incorporates the ‘838 Patent by reference.

The Federal Circuit cited 35 U.S.C. § 119(e)(1) and §120 for their requirements of co-pendency and a specific reference to claim priority of provisional and non-provisional applications. Additionally, 37 C.F.R. § 1.78 requires an identification of all prior applications by relationship (i.e., continuation, divisional, or continuation-in-part) and by their application number. Despite Droplets’ contention that these are “hypertechnical” requirements, the Court pointed to the importance of clear notice to the public. The public should not have the burden of unearthing and deciding priority claims when the patentee is best suited to understand and set forth the relationship of his applications.

Droplets further argued that the PTO initially sent three filing receipts with the desired priority data. However, the PTO later sent a corrected filing receipt reflecting priority only to the ‘838 patent. After receipt, Droplets submitted an amendment, a request for continued examination, and withdrawal of notice of allowance all without correcting the priority data. Because the burden was with the applicant, and the MPEP provides clear guidance for priority claims, Droplets could not rely on Patent Office error.

Droplets next argued that, if incorporation by reference is adequate for § 112, it is also adequate for § 120. The Court disagreed, citing the important § 120 purpose of providing clear notice to the public of the patentee’s claimed priority date.

Take Away

In the interest of providing the public clear notice of a patent’s claimed priority date, 35 U.S.C. § 120, as promulgated by 37 CFR § 1.78, requires a patent applicant to include a specific reference (i.e., relationship to an earlier application and the earlier application number) to claim a benefit of priority. Simply incorporating an earlier application by reference is insufficient.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 7 Comments comments.

  1. Alice Williamson April 30, 2018 12:30 pm

    “…attempted to claim priority to an earlier ‘917 provisional patent…”

    Perhaps some editorial review before publication?

  2. Gene Quinn April 30, 2018 1:19 pm


    Were you confused? I love the drive by commentary telling others how to do things better by someone like yourself who chooses to use a fake e-mail address. Perhaps if you are going to be snarky and condescending you shouldn’t use a fake e-mail?

  3. Anon April 30, 2018 2:54 pm


    Let me simply renew my idea that those with fake emails have their posts removed.

    A true email still maintains anonymity or pseudonymity here. Those that have seen this site being attempted to be abused by those with fake emails understand that using a real email is not difficult, does not take away from the “Poor Richard” or “Publius” benefits, and allows this forum to operate far better than that other blog.***

    ***Of course, a major reason for this is the requirement that opinions be made earnestly, allow themselves to become informed opinions, and are not merely anti-patent propaganda sideshows. If one does not attempt to dissemble, one may fully share their informed opinions, even in disagreement.

  4. Gene Quinn April 30, 2018 4:16 pm


    I think I agree. Moving forward, comments from those with obviously fake e-mails (i.e., who are not substantively contributing to the discussion will be deleted. That is going to be pretty much all of them.

  5. Anon May 1, 2018 7:25 am

    Thanks Gene – you run a great site, with plenty of different opinions (quite opposite how some try to paint your place), and I have noticed (as I am sure that others have as well) the “flavor’ of repeated attempts to distract focus on the merits of meaningful dialogue – especially when those merits point to the more Pro-Patent side of the discussion.

    This way, anonymity and pseudonymity are preserved (as you are no doubt well aware of the value that I place with those mechanisms) and the dissembling is abated.

    There is no doubt in my mind that the ability to promote a forum without that dissembling is one reason why your site continues to garner the accolades that it does.

  6. Anon May 1, 2018 12:10 pm

    Gene, for what it’s worth, I can see Alice’s point.

    Your blog has always aggressively tried to squash the public’s presumption that a “provisional patent” exists. Its a bit awkward to author an article like this: and then respond to Alice with obvious anger asking whether your mistake lead to confusion. It seems like you corrected the article after Alice’s comment.

    Is anyone reading this confused by the phrase “provisional patent”? No, of course not. I think it’s a bit silly and hypocritical, however, to get angry at her when you make an error that you yourself have tried to correct in other people.

    I also think it’s alarming you’d look to her submitted email addresses at all … it’s almost like you’re trying to dox someone who comments negatively on your blog. Should the source of the comment matter at all?

  7. Anon May 1, 2018 5:54 pm

    Thank you sister Anon at post 6.

    I don’t mind sharing the name, but will point out that your post is not the stuff from the “usual” Anon.

    I also think that you are inviting a “slap” with the notion of challenging a “provisional patent.” aspect.

    There is NO such thing as a provisional patent.

    There is such a thing as a provisional patent application.

    The difference is real – and huge. The difference was one that allowed unscrupulous operators to dupe a large number of people who thought that what they would be getting would be an enforceable patent, and all that they obtained was the provisional “placeholder” with no possibility of enforcement (short of the additional work of either a direct conversion or a separate non-provisional being crafted and claiming back (priority-wise) to the provisional.

    As to “alarming to look at submitted email addresses at all” – I really cannot take you seriously. That you then impugn that this is only to be done “for comments negatively on the blog” is quite frankly ludicrous. The “source” remains anonymous (or pseudonymous) or not – as desired. The “source” only becomes “important” for preventing abuse of the forum – and accords fully with Gene’s other existing forum rules concerning dissembling and propaganda-driven drivel.

    That this type of drivel is often associated with anti-patent views is part and parcel of the propaganda efforts. Sorry if the use of a mechanism (already built into the blog controls) seems to “worry” you so much.

    Trust me, I have disagreed with Gene aplenty. But I abide my the “norms” here and have no concern about my anonymity or being banned for the types of attacks and dissembling that have earned that distinction. The use of “real emails” also allows the meaningful enforcement of such well-earned bans. Otherwise spamsters and the like will (and have) merely morph repeatedly to avoid the meaningful controls.

    There are plenty of other places on the web for the likes of such – you are more than welcome to those forums.