Federal Circuit Applies "Four Corners" Test For Incorporation By Reference To Support Priority Date

12 June 2012 PharmaPatents Blog

In Hollmer v. Harari, the Federal Circuit clarified the requirements for incorporation by reference of subject matter required to support a priority claim under 35 USC § 120. The decision underscores the care that must be taken in a seemingly clerical matter to preserve substantive patent rights.


The case before the Federal Circuit stemmed from an interference proceeding (Interference No. 105,606) between Harari and Mehrotra (the inventors of U.S. Patent Application 09/310,880) and Hollmer and Cleveland (the inventors of U.S. Patent 5,828,601). The USPTO Board of Patent Appeals and Interferences had found that Harari’s ’880 application was entitled to the benefit of the filing date of an earlier application (U.S. Patent Application 07/337,566) and “thus preceded the date of conception for Hollmer’s ’601 patent,” and so had entered judgment against Hollmer. Hollmer appealed.

The Harari Applications

Harari’s ’880 application was filed May 14, 1999, and traces back to the ’566 application, which was filed April 13, 1989. The lineage of the application is as follows:

U.S. Patent Application 09/310,880 filed May 14, 1999 is a continuation of
U.S. Patent Application 08/771,708 which is a continuation of
U.S. Patent Application 08/174,768 which is a continuation of
U.S. Patent Application No. 07/963,838 which is a divisional of
U.S. Patent Application 07/337,566 filed April 13, 1989

The ’566 application was filed on the same day as another Harari application, U.S. Patent Application. 07/337,579. The ’566 application included the following incorporation by reference statement:

Optimized erase implementations have been disclosed in two copending U.S. patent applications. They are copending U.S. patent applications, Serial No. 204,175, filed June 8, 1988, by Dr. Eliyahou Harari and one entitled “Multi-State EEprom Read and Write Circuits and Tech-niques,” 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[d] by reference.

The ’579 application is the application cited in the emphasized passage.

The ’880 application was filed as a photocopy of the ’566 application with “a transmittal sheet identifying the filing as a continuation application, and a preliminary amendment” that revised the incorporation by reference language “to refer to the ’579 application by both serial number and filing date and added additional material from the ’579 application.”

The First Federal Circuit Appeal (Harari I)

Earlier in the interference proceedings, Hollmer asserted that the Preliminary Amendment filed with the ‘880 application introduced new matter because the ‘880 application did not effectively incorporate by reference the ‘579 application because the ‘579 application was not filed “on the same day” as the ‘880 application. Although the Board agreed, the Federal Circuit reversed, holding:

The proper standard by which to evaluate the sufficiency of incorporation by reference language, at this stage of the proceedings, is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented.

As summarized in the 2012 Federal Circuit decision:

Applying this standard, we held that the reasonable examiner, who had the benefit of the transmittal sheet and the preliminary amendment, would understand that the copied language from the original ’566 application in the ’880 application referred to the ’579 application.

The Board Proceedings On Remand

On remand, the Board considered whether Harari’s involved claims were entitled to the benefit of the filing date of the ’566 application. As explained by the Federal Circuit, “the Board had to determine whether the intervening ’838 and ’768 applications sufficiently incorporated the ’579 application by reference such that 35 U.S.C. § 120’s continuity requirements were satisfied.”

The ’838 and ’768 applications contain the same incorporation by reference language as the ’566 application but “were never amended to refer to the ’579 application by serial number and filing date.” The Board applied the “reasonable examiner standard” from the Federal Circuit’s Harari I decision, and found that “a reasonable examiner would have had access to all of the filing papers, including the transmittal sheets, for the ’838 and ’768 applications, and consequently would have understood that the disputed incorporation by reference language in those applications referred to the ’579 application.” Thus, the Board determined that “the ’880 application was entitled to the priority date of the ’566 application.

The 2012 Federal Circuit Decision

The Federal Circuit noted that all of the issues presented raise questions of law that it decides de novo:

Whether the intervening patents in a chain of priority maintain the requisite continuity of disclosure is a question of law we review de novo.

Whether and to what extent a patent incorporates material by reference also is a legal question we review de novo.

As summarized in the decision, in order to be entitled to “the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Indeed, “if any application in the priority chain fails to make the requisite disclosure of subject matter, the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain.”

In this case, the issue turned on whether the ’838 and ’768 applications effectively incorporated by reference the ’579 application. The Federal Circuit determined that they did not.

The court explained that its decision in Harari I that applied a “reasonable examiner” standard represented a narrow departure from the usual rule that an incorporation by reference should be assessed with reference to “whether one of ordinary skill in the art could identify the information incorporated.” The court emphasized that “Harari I dealt specifically with the language of the ’880 application viewed in light of the preliminary amendment and accompanying transmittal sheet.” The court explained further that “Harari I’s modified standard applies when an application is at the initial filing stage and the examiner is evaluating an amendment that clarifies ambiguous incorporation by reference language.”

The court noted that where, as here, the issue is one of continuity of disclosure, the “inquiry is undertaken using the ‘reasonable person of ordinary skill in the art standard.’” The court also cited earlier precedent for the proposition that “§ 120 requires that the disclosure actually appear within the specification,” such that “amendments in later applications cannot cure an otherwise defective application in the priority chain.” The court noted that “[t]he incorporation by reference analysis . . is similarly constrained by the four corners of the application.”

Applying these principles, the Federal Circuit determined the incorporation by reference language was ineffective in the intervening applications because it did not “identify with detailed particularity what specific material it incorporates” to a person of ordinary skill.” In particular, neither intervening application was “’filed on the same day’ as or ‘copending’ with, the ’579 application.” Moreover, “[a]t least two other applications . . . were ‘copending’ with the ’838 application and had the same title. Thus, the language “on its face . . . does not directly lead one of ordinary skill to the ’579 application but rather presents several potential documents for incorporation.”

Perhaps realize that its decision might draw criticism for elevating form over substance, the court advised:

As we have previously cautioned, “[P]atent draftsmanship is an exacting art, and no less care is required in drafting an incorporation by reference statement than in any other aspect of a patent application.”

The court again remanded the case to the Board for further proceedings based on its holding that the earliest effective filing date of the ’880 application is December 20, 1996—the filing date of the ’708 application which “undisputedly discloses the ’579 application.”

A Difficult Analysis

As a patent practitioner, I always cringe when the Federal Circuit dusts off one of its quotes about the fine art of patent drafting. I am particularly bothered by this decision because the “defect” in the incorporation by reference stems from the common practice of filing a continuation application as a photocopy of the original application. Given that “incorporation by reference” is a term of art in the context of U.S. patent law, shouldn’t the effectiveness of incorporation by reference language be assessed from the perspective of someone with some understanding of U.S. patent practice? If the court’s “reasonable person of ordinary skill in the art” knew that continuation applications usually are filed as a photocopy of the original application and would have understood that the “same day” probably referred to the filing date of the original application, would the court have reached a different conclusion?  

I also am troubled by the court’s application of different tests to seemingly equivalent issues, and its attempt to draw a line between new applications/new matter issues and intervening applications/continuity of disclosure issues. A more manageable line would focus on the failure to clarify/update the incorporation by reference language in the intervening applications. While the court would have to soften its “four corners of the application” language to draw such a line it could do so by limiting the continuity inquiry to the application as filed and any amendments that did not introduce new matter (as judged by a person of ordinary skill in the art with a basic understanding of patent practice!).

Could Harari cure the defects in the incorporation by reference language in the intervening applications by filing reissue applications of the patents granted from the intervening applications?

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services