Addressing a decision by the U.S. Patent and Trademark Office  Board of Patent Appeals and Interferences (the Board) in an interference proceeding, the U.S. Court of Appeals for the Federal Circuit affirmed that the phrase “an application filed” in 35 U.S.C. § 135(b)(2) included applications afforded the benefit of an earlier priority date under 35 U.S.C. § 120.  Loughlin v. Ling, Case No. 11-1432 (Fed. Cir., July 11, 2012) (Lourie, J.).

The case arose from an interference proceeding under § 135(a) between a claim of a patent to Loughlin and a claim to an application for a patent by Ling. Both the Loughlin patent and Ling application are directed to a multi-function lock.  The Loughlin patent resulted from an application filed on May 13, 2004 and published on November 18, 2004.  The Ling application, which was filed on February 5, 2007, was granted the benefit of an earlier priority date under § 120 from an earlier filed application filed on January 16, 2004. 

Ling copied certain claims of Loughlin’s published application, in order to provoke the interference.  

Loughlin moved for judgment under § 135(b)(2), asserting that Ling was barred from provoking an interference because Ling’s application was filed more than one year after the publication date of the application that resulted in the Loughlin patent.  The Board denied Loughlin’s motion, holding that since under § 120, Ling’s application had an effective filing date of January 16, 2004, Ling’s application is not an application filed after the publication date of the Loughlin application.  After the Board cancelled the interference claim of Loughlin’s patent, Loughlin appealed.

On appeal, the Federal Circuit affirmed the Board’s decision.  The Court held that the Board correctly interpreted § 135(b)(2) in view of the plain language of the statue.  The Court determined that, under § 120, Ling’s application was entitled to the benefit of the priority date of the earlier application, and thus Ling was entitled to the earlier date in overcoming the bar set forth in § 135(b)(2).  The Court further noted that the Board consistently interpreted “an application filed” in § 135(b)(2) as including the priority benefit of § 120.