By Catharina Chin Eng and Matt Johnson

The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. §  21(b) for USPTO papers and fees due on a weekend or holiday.  See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op. at 13-19 (PTAB Feb. 20, 2019) (Paper 10) (grace period extended the one-year deadline for filing IPR petitions under 35 U.S.C. § 315(b), which fell on a weekend, to the next business day); Samsung Elecs. Co. v. ELM 3DS Innovations, LLC, Case IPR2016-00393, slip op. at 4-5 (PTAB June 30, 2016) (Paper 11) (applying grace period to IPR petition-filing deadline that occurred during USPTO system shutdown, which was considered by the USPTO to be Federal holiday).

In NetApp, Inc. v. KOM Software, Inc., Case IPR2019-00605, slip op. at 11-17 (PTAB Sept. 9, 2019) (Paper 10), the PTAB found that the grace period is applicable to the deadline for filing continuing applications claiming priority benefit under 35 U.S.C. § 120.  Based on this finding, the PTAB concluded that the challenged patent was entitled to its earliest U.S. filing date.  Accordingly, the Petitioner’s relied-upon reference was not prior art and the PTAB denied institution.

In its petition, NetApp, Inc. and Hewlett Packard Enterprise Co. (collectively “Petitioner”) requested inter partes review of the claims of U.S. Patent No. 7,536,524 (“the ’524 patent”).  NetApp, slip op. at 2.  The ’524 patent claims its earliest effective filing date of March 15, 1999 as follows:

  • the ’524 patent claims priority to U.S. Patent 7,076,624 (“the ’624 patent”)
  • the ’624 patent claims priority to U.S. Patent 6,654,864 (“the ’864 patent”).
  • the ’864 patent issued from a continuing application filed on January 2, 2002, claiming priority to U.S. Application No. 09/267,787 (“the parent ’787 application”)
  • the parent ’787 application was filed on March 15, 1999, and issued as U.S. Patent No. 6,336,175 on January 1, 2002.

Petitioner contended that since the continuing application giving rise to the ’864 patent (filed January 2, 2002) was not timely filed before the parent ’787 application issued as a patent on January 1, 2002 (New Year’s Day), as specified by Section 120’s “copending” requirement, there was a break in the chain of priority.  Therefore, the ’524 patent was not entitled to the March 15, 1999 filing date of the parent ’787 application but was instead entitled only to a filing date of no earlier than January 2, 2002.  Id. at 11-12.  Thus, the Walker reference relied on by Petitioner and published January 31, 2000, qualifies as prior art under Section 102(b).  Id. at 3 and 11.

Acknowledging that Section 21(b) “provides that when the last day ‘for taking any action or paying any fee in the [USPTO]’ falls on a holiday, the action be taken on the next secular or business day,” Petitioner nevertheless asserted that Section 21(b)’s grace period is not applicable to Section 120.  Petitioner asserted that this was the case because Section 120 requires the continuing application be filed before the application to which it claims priority issues as a patent.  Id. at 12.

The PTAB rejected Petitioner’s arguments.  The PTAB found that Section 21(b) does not make any distinction among the types of “action” to which it applies and that the legal act of filing a continuing application is an “action” falling within the grace period.  Thus, if the last day for taking the action of filing a continuing application falls on a Federal holiday (e.g., January 1, 2002), the action of filing such a continuing application can be taken on the following business day (e.g., January 2, 2002).  Id. at 13-14.  Furthermore, the PTAB observed that the “filed before patenting” requirement of Section 120 does not strictly require that the continuing application be filed before the first application issues as a patent, relying on Immersion Corp. v. HTC Corp., 826 F.3d 1357, 1365 (Fed. Cir. 2016) (finding that a filing occurring on the same day that the first application issues as a patent satisfies the “before the patenting” requirement).  Id. at 14.

The PTAB also rejected Petitioner’s argument that 37 C.F.R. § 1.78 precludes the ’864 patent from claiming priority benefit because the rule-based holiday exception of 37 C.F.R. § 1.7(a) applies only to “time periods,” and not Section 120’s “copending” requirement.  The PTAB further observed that the Patent Office has repeatedly stated that the holiday grace period of Section 21(b) and Rule 1.7(a) applies to the filing of continuing applications under Section 120.  Id. at 15-17.

Unlike its prior applications of the Section 21(b) grace period to IPR filing due dates, the effects of this PTAB decision are not limited to post-grant filings but are also relevant to pre-grant practice.  While the PTAB found that the grace period can extend deadlines falling on holidays for filing continuing applications under Section 120, best practices call for making such filings sufficiently in advance of upcoming holidays.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.