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Archived updates for Monday, August 22, 2005

Priority Claim to National Stage Application Receives Benefit of PCT Filing Date

In Broadcast Innovation, L.L.C., et al. v. Charter Communications, Inc., et al. (Fed. Cir., August 19, 2005) the court held that the absence of a specific reference to a parent PCT application in the priority claim did not prevent the applicant from receiving the benefit of the PCT filing date where the applicant properly claimed priority to the national stage application that resulted from the PCT application.

In this case, the applicant filed the ’595 patent on July 18, 1995, as the U.S. national stage application of the original PCT application. "However," the court noted, "July 18, 1995 is not the "U.S. filing date" of the ’595 patent":

Specifically, under 35 U.S.C. § 363, the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application. 35 U.S.C. § 363 (1984); see also Manual of Patent Examining Procedure (MPEP) § 1893.03(b) (8th Ed. including May 2004 revisions) ("It should be borne in mind that the filing date of the international application is also the filing date for the national stage application."). Thus, the ’595 patent’s U.S. filing date is November 26, 1993, the filing date of the PCT application. Because the ’094 patent is entitled to priority back to the ’595 patent’s U.S. filing date, the ’094 patent’s priority date under 35 U.S.C. § 120 as well as its term calculation date under 35 U.S.C. § 154(a)(2) is at least November 26, 1993. In other words, the ’094 patent, which specifically references the ’595 patent and thus satisfies the requirements of 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a), is entitled to effectively the same date as the original PCT

* * *

Where proper reference to a national stage application exists, no reference
to the corresponding PCT application is required because the national stage
application effectively has the same U.S. filing date as the PCT application.
Therefore, under either version of the statute or the regulation, the reference
in the ’094 patent to the ’595 and ’934 patents meets the statutory and
regulatory requirements.

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