Mack on the Practical Implications of E.I. Du Pont de Nemours v. MacDermid Printing Solutions
As a matter of law, the Federal Circuit in E.I. Du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 2008 U.S. App. LEXIS 10363 (Fed. Cir. 2008) held that a patent was entitled to the provisional application priority date. The case underscores the importance of keeping clear and easily-accessible records, timely asserting critical dates and identifying all critical actors in order to save clients' time and money and avoid embarrassment. Olga Mack, a patent litigator at the Palo Alto office of Wilson Sonsini Goodrich & Rosati, analyzes E.I. Du Pont and discusses its implications. She writes:
In E.I. Du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 525 F.3d 1353, the Federal Circuit vacated a district court’s denial of preliminary injunction. Here, Du Pont (the patentee-owner) sued MacDermid (the accused patent infringer) for patent infringement. During Du Pont’s motion for preliminary injunction, MacDermid asserted, among other defenses, public use or sale of the invention on February 27, 2001, more than one year prior to the non-provisional application filing date (the so called “102(b) bar”). Two days after the motion for preliminary injunction hearing, Du Pont asserted March 6, 2000 as a relevant critical date, one year prior to the provisional application date.
“In this case, the Federal Circuit spared Du Pont from the consequences of ‘candidly admitted’ ‘oversight’ in identifying the critical dates. The Federal Court held that, as a matter of law, the patent was entitled to the provisional application priority date of March 6, 2000.”
The Federal Circuit explained that 35 U.S.C. § 119(e)(1) governs patentee’s entitlement to the provisional priority date and lists the following well-established requirements:
(1) the provisional application must comply with the requirements of section 112, first paragraph, and the non-provisional application must be for the same invention;
(2) the non-provisional application must be filed within 12 months of the provisional;
(3) provisional and non-provisional applications must be an overlap of inventorship; and
(4) the non-provisional application must include a specific reference to the provisional application.
. . . .
The Federal Circuit observed that Du Pont’s certification of correction pursuant to 35 U.S.C. § 254 (to add a specific reference to the provisional application) of the USPTO [United States Patent and Trademark Office] error was valid even though Du Pont failed to correct the error while the application was pending. The Federal Court, however, emphasized that it is “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.” Thus, the practitioners should review the prosecution record and USPTO communications to timely correct any errors to increase the accuracy of the patent prosecution record and avoid costly disputes.
(citations omitted)