Worlds Inc (WDDD)

[DataStream]

A similar argument to Activision's was made in district court but it was reversed by the federal appeals court. It centered on the Application Data Sheet ("ADS") making a continuation reference to the provisional application, even though the patent itself did not reference the provisional application due to an oversight by the USPTO.

Here's some highlights of the appeals court's decision:

http://scholar.google.com/scholar_case?case=7600470976941784730&q=%22119(e)(1)%22+%22specific+reference%22+to+the+provisional+application&hl=en&as_sdt=2,5

In prosecuting the '859 patent, DuPont originally filed a provisional application on March 6, 2001, and on February 27, 2002, it filed a non-provisional application. The Application Data Sheet ("ADS") filed with the non-provisional application stated: "Continuity Data: This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING." The patent as issued, however, did not reference the provisional application due to an oversight by the Patent and Trademark Office ("PTO"). After issuance, DuPont sought a certificate of correction pursuant to 35 U.S.C. § 254 to add a reference to the provisional application on the title page of the '859 patent. The PTO issued the Certificate of Correction on July 26, 2005, adding to the title page, "Related U.S. Application Data, Provisional application No. 60/273,669, filed on March 6, 2001."

35 U.S.C. § 119(e)(1) requires, for a claim of priority, that the non-provisional application contain "a specific reference to the provisional application." Under MPEP § 201.11, the specific reference can be either in the first sentence of the specification 1361*1361 or in the application data sheet. "If the specific reference is only contained in the application data sheet, then the benefit claim information will be included on the front page of any patent or patent application publication, but will not be included in the first sentence(s) of the specification." Id.; see also 37 C.F.R. § 1.76(b)(5) ("Providing [domestic priority information] in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) ..., and need not otherwise be made part of the specification."); 37 C.F.R. § 1.76(d)(4) ("The Office will capture bibliographic information from the application data sheet ...").

In this case, it is undisputed that the ADS contained a reference to the provisional application. But MacDermid argues that the reference in the ADS was insufficient because DuPont did not use the language that is "authorized by the MPEP to claim the benefit of a provisional application." Under MPEP § 201.11, "[w]hen the nonprovisional application is entitled to an earlier U.S. effective filing date of one or more provisional applications under 35 U.S.C. 119(e), a statement such as `This application claims the benefit of U.S. Provisional Application No. 60/ ___, filed ___, and U.S. Provisional Application No. 60/ ___, filed ___.' should appear as the first sentence(s) of the description or in an application data sheet." (emphasis added).

Here, rather than the precise language suggested in the MPEP, the ADS in the non-provisional application stated: "Continuity Data: This application is a non-provisional of provisional 60/273669 2001-03-06 WHICH IS PENDING." Contrary to MacDermid's argument, this reference did not run afoul of the MPEP by failing to use magic words. The MPEP provision requires only that the applicant use a statement "such as" the one provided in Section 201.11. A reasonable person reading the language in the ADS would have concluded that the applicant was claiming priority to an earlier provisional application. Thus, we find no defect in the language used to reference the provisional application here.

By putting the continuity data in the ADS, DuPont expected that the PTO would capture the information and place it on the title page of its patent. As MacDermid notes, however, there were some indications during prosecution that the PTO had failed to capture the information. MPEP § 201.11. We hold that a lack of 1362*1362 diligence during prosecution, at least under the facts of this case, does not convert a PTO error into an applicant error for the purpose of seeking a post-issuance certificate of correction.

It is, of course, desirable to have applicants correct the PTO's mistakes in pending applications as soon as possible so that the correct information is reflected in published applications and issued patents. Nevertheless, nothing in the statute conditions eligibility for a certificate to correct PTO error on the applicant's diligence in correcting the mistake, and the statute does not set any time limit for seeking such corrections. 35 U.S.C. § 254 ("Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents."). Additionally, because there is a requirement that such certificates issue only if the mistake is "clearly disclosed by the records of the [PTO]," the chance that competitors will be harmed by any delay is minimal. In this case, the continuity data was included in the ADS, a document contained in the prosecution history.

Further, DuPont could have corrected its published application under 37 C.F.R. § 1.221 and MPEP § 1130. While failure to make such a correction may have potential consequences,[6] we see no reason why failure to correct a published application should prevent the patentee from later correcting his issued patent under 35 U.S.C. § 254.

In sum, the undisputed facts in this case show that the '859 patent is entitled to claim priority to the provisional application as a matter of law: the provisional and non-provisional applications are identical; the non-provisional application was filed within 12 months of the filing of the provisional application; the two applications 1363*1363 share a common inventor; and the non-provisional application included a specific reference to the provisional application in the application data sheet. Thus, we vacate and remand for the district court to consider MacDermid's remaining invalidity and unenforceability challenges in light of the correct priority date, as well as the remaining preliminary injunction factors.