PTO's Interpretation of the Patent Statute Give Deference

COOPER TECHNOLOGIES COMPANY v. Dudas, [2008-1130] (August 19, 2008) [LINN, Michel, Lourie] The Federal Circuit affirmed the USPTO’s interpretation that “original application” as used in the reexamination statute includes utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications and the national stage phase of international applications.
DISCUSSION: The AIPA created the inter partes reexamination procedure to allow third parties to have an expanded role in the reexamination of issued patents. The inter partes reexamination procedure is available for “any patent that issues from an original application filed in the United States on or after” November 29, 1999. Thomas & Betts Corporation requested inter partes reexamination of U.S. Patent No. 6,984,791 owned by Cooper Technologies Company. The ’791 patent issued from an application filed on April 14, 2003, but which claims priority from applications filed July 22, 2002, March 20, 1997, June 20, 1994, and ultimately March 10, 1993. Cooper filed a petition with the Patent Office seeking to terminate the inter partes proceeding, arguing that the ’791 patent did not issue from an original application filed after November 29, 1999. The PTO determined that the ’683 application is an “original application” for purposes of the AIPA, even though it is a continuation of and claims priority from an application filed prior to November 29, 1999.
The Federal Circuit said that under the familiar two-step Chevron analysis, it first determines whether Congress has directly spoken to the precise question at issue. If so, then that intention is the law and must be given effect; if not, the court must determine whether the agency’s interpretation is based on a permissible construction of the statutory language at issue. After examining the use of “original application” in the statute, in the MPEP, and in the Federal Circuit’s precedent, the Federal Circuit concluded that that Congress had not “directly spoken to the precise question at issue” – namely the meaning of “original application”. The Federal Circuit turned to the second part of the Chevron analysis and concluded that the Patent Office’s interpretation of “original application” was permissible.