In Pfizer Inc. v. Teva Pharmaceuticals, 2008 U.S. App. LEXIS 4969 (Fed. Cir. 2008), the Federal Circuit held that claims in a continuation-in-part (CIP) application that were identical to restricted-out claims in a parent application were not entitled to the priority date of the parent application. Many practitioners were surprised by this seemingly inconsistent result in which claims were copied verbatim from an earlier application but were still not entitled to the priority date of that earlier application. David Heckadon, a partner at Gordon & Rees, analyzes Pfizer and Poweroasis Inc. v. T-Mobile, 2008 U.S. App. LEXIS 7827 (Fed. Cir. 2008) and discusses priority determinations of CIP claims. He writes:
[T]he court [in Pfizer] noted that a divisional application contains identical disclosure to its parent, but that a CIP application adds new matter. The court stressed that the application in question was filed as a CIP, not as a divisional. As such, it did not fall within the “literal terms” of 35 U.S.C. Section 121 sets forth (annotated below):
If two or more independent and distinct inventions are claimed in one application…. [the application may be restricted] …… to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120….. it shall be entitled to the benefit of the filing date of the original application [and not used as a reference against the first application]….
“On April 11, 2008, the CAFC [Court of Appeals for the Federal Circuit] held in Poweroasis Inc. v. T-Mobile, 522 F.3d 1299 (Fed. Cir. 2008), held [sic] that there was no presumption that claims in a CIP were entitled to the benefit of the filing date of its priority parent application.”
So what was Poweroasis thinking? Before Poweroasis, it was actually surprisingly unclear whether the presumption of validity extended to the question of priority when a dispute arises concerning whether a CIP is entitled to the priority date of a parent application. The actual question as to who had the burden of proof to show priority was previously not settled. Poweroasis was the first time the Federal Circuit looked at priority of a disputed patent (where the Patent Office had not previously made a priority determination).
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. . . [T]he Patent Office may make priority determinations of CIP claims when making rejections. For example, an examiner may look at a claim in a CIP and then reject the claim based on an “intervening reference” having a date between the date of filing of the priority parent application and the CIP application. However, such a rejection is only proper if the claim in question was only entitled to the filing date of the CIP (i.e.: the claim is directed to the new matter of the CIP).