Pioneer Hi-Bred International, Inc. v, Monsanto Technology LLC, 671 F.3d 1324, 1328, 101 USPQ2d 1849, 1852 (Fed. Cir. 2012)(opinion by Senior Circuit Judge Clevenger for a panel that also consisted of Circuit Judges Prost and Reyna)(hereinafter referred to as “Pioneer”), held that “multiple pre-critical date claims, considered together, can provide the foundation necessary for post-critical date claims to be held timely [under 35 USC 135(b)(1)].” In support of that holding, Judge Clevenger cited Thompson v. Hamilton, 152 F.2d 994, 68 USPQ 161 (CCPA 1946)(hereinafter referred to as “Thompson”), and Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977)(Rich, J.).
In response to Judge Clevenger’s complaint that “[t]he Thompson opinion does not expressly reproduce the [pre-critical date] claims that were at issue in that appeal . . . ,” 671 F.3d at 1328, 101 USPQ2d at 1852, we acquired the pre-critical date claims at issue in Thompson from the U.S. National Archives, and we have posted them below.
Curiously, Hamilton’s pre-critical date claims were not included in the board’s decision. However, Hamilton’s pre-critical date claims were recited in Hamilton’s brief submitted to the board (pages 12-15), included below.
In an article scheduled to be published in the June 2012 issue of Intellectual Property Today, we analyze the Thompson opinion in light of Hamilton’s pre-critical date claims and conclude that Thompson should be overruled!
Source: Supplement to 19 Intellectual Property Today No. 5