Loughlin v. Ling

If a patent application is entitled to receive the benefit of an earlier effective date under 35 U.S.C. § 120, the earlier date is that application’s filing date for determining whether any of that application's claims offend the one year time restraint in 35 U.S.C. § 135(b)(2).

Opinion (Lourie): Loughlin and Ling each claimed to had invented a multiple function lock. Loughlin’s patent application covering the lock was filed in March of 2004, published in November of 2004, and issued in 2008. Ling filed his lock patent in January of 2004. In 2007, Ling sought to provoke an interference, and amended his application to include a claim copied from Loughlin’s then pending application. The Board of Patent Appeals (Board) determined that Ling’s amended application was entitled to the benefits of the earlier filing date of an application filed in 2004. Further, it held that the earlier effective date of Ling’s application meant, pursuant to the § 135(b)(2) timeliness requirement, it had been filed before Loughlin’s application and, therefore, was not filed outside the one-year time frame required by the statute. Loughlin appealed. Before the Court of Appeals, Loughlin argued that the purpose of § 135(b)(2)’s time limitation was frustrated by the Board’s holding because it would permit a party seeking to provoke an interference to do so long after the time limitation had taken effect. The Federal Circuit disagreed, noting that nothing in the text of 35 U.S.C. § 120 restricted the use of that earlier date. The Court concluded, therefore, that because Ling’s amended application was entitled to the earlier filing date under § 120, it was entitled to use that earlier date to avoid the time restraint in § 135(b)(2) as well. The Board’s judgment was AFFIRMED.