Filing Date of PCT International Application Established Priority Date for Later Filed United States Application

Case: Broadcast Innovation v. Charter Communications, Inc. (Fed. Cir. 8/19/05 - No. 05-1008).

The One Sentence Summary: A patent derived from a Patent Cooperation Treaty (PCT) application was entitled to a priority date of the filing of the original PCT application even though the patent mentioned only the United States application on the face of the patent.

Federal Circuit Holdings:

• The patent was entitled to a priority date of the filing of the international PCT application. "As previously mentioned, the applicant filed the ’595 patent on July 18, 1995, as the U.S. national stage application of the original PCT application. However, 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 application."