In Hollmer v. Harari (“Harari II”), the Court of Appeals for the Federal Circuit recently held that a patent application was not entitled to the priority date of an earlier-filed reference application because intervening applications contained deficient incorporation by reference statements.1 Incorporating prior patents and applications by reference is an often-used tool in patent prosecution. Like other tools, however, it can become dangerous when used incorrectly. Even if a reference is incorporated correctly, including too little2 or too much3 subject matter can produce unintended consequences in litigation. When an incorporation by reference statement is substantially deficient, a draftman’s error can endanger the continued life of a patent portfolio.

Harari I: The Application and the “Reasonable Examiner” Standard

Harari II arose from an interference between pending patent application serial no. 09/310,880 (“the ‘880 Application”) and U.S. Patent No. 5,828,601 (“the ‘601 Patent”).4 The Federal Circuit first reviewed that interference in Harari v. Hollmer (“Harari I”).5 In Harari I, the Board of Patent Appeals and Interferences (“the BPAI”) had dismissed from the interference the parties asserting the ‘880 Application, “finding that [the] claims were unpatentable for lack of written description due to an insufficient incorporation by reference statement.”6

The ‘880 Application claimed priority to prior application serial no. 07/337,566 (“the ‘566 Application”) via a chain of divisional and continuation applications.7 As originally filed, the disclosure of the ‘566 Application incorporated another prior application serial no, 07/337,579 (“the ‘579 Application”) by identifying it as one of two co-pending applications, stating that it had been “filed on the same day as the present application” and providing the title and named inventors of the ‘579 Application.8 The ‘566 Application contained no further characteristics for identifying the ‘579 Application. Other applications in the ‘880 Application’s priority chain contained the same incorporation statement.9 Although the ‘579 Application was not part of the priority chain between the ‘566 and ‘880 Applications, each application in the priority chain attempted to incorporate the ‘579 Application.10

The preliminary amendment to the ‘880 Application clarified the incorporation statement to identify the ‘579 Application by serial number and filing date, added material from the ‘579 Application, and added new claims “directed, at least in part, to that material.”11 The BPAI had found that the incorporation statement in the ‘880 Application as originally filed was too ambiguous to constitute a proper incorporation by reference, and that the material related to the ‘579 Application and added to the ‘880 Application by the preliminary amendment was new matter.12 Specifically, the BPAI found that “one could not tell from the original disclosure whether the incorporation language referred to an application filed on the same day as the ‘566 application, or on the same day as the ‘880 application.”13

The Federal Circuit reversed and remanded, holding that the BPAI had applied an inappropriate standard in determining the sufficiency of the incorporation statement.14 The statement should not have been judged from the viewpoint of the ordinary person, but from the viewpoint of “a reasonable examiner in light of the documents presented.”15 Although the statement may have been ambiguous if read in isolation, an examiner could have determined, by referring to the information contained with the original documents filed (e.g., transmittal sheet and the preliminary amendment), that the statement incorporated the ‘579 Application.16

Harari II: Intervening Applications and the “Ordinary Skill” Standard

In Harari II, the same incorporation statement was the subject of dispute, but in a slightly different context. After the Federal Circuit remanded Harari I, the BPAI used the “reasonable examiner” standard to determine that the same incorporation statement in the intervening applications was sufficient to allow the ‘880 Application to relate back through the priority chain to the ‘556 Application.17

The Federal Circuit again reversed, clarifying that the “reasonable examiner” standard articulated in Harari I was applicable only “when an application is at the initial filing stage and the examiner is evaluating an amendment that clarifies ambiguous incorporation by reference language.”18 In evaluating incorporation statements in past applications, however, the correct standard is “‘whether one of ordinary skill of the art could identify the information incorporated.’”19 Although a reasonable examiner could have determined that the incorporation statement used in the filing stage of the ‘880 Application referred to the ‘579 Application, a person of ordinary skill in the art could not have determined whether the same incorporation statement used in the intervening applications referred to the ‘579 Application or one of several other potential references.20 The intervening applications were never amended to reference the ‘579 Application by filing date and serial number. Neither of the intervening applications were filed on the same day as the ‘579 Application, and at least two other applications that listed the same inventors and had the same title as the ‘579 Application were co-pending with one of the intervening applications.21

Because the incorporation statements in the intervening applications were ambiguous to a person of ordinary skill in the art, the ‘880 Application lost over seven years of priority.22 More importantly, that loss placed the priority date of the ‘880 Application after the filing date of the patent at issue in the interference, the ‘601 Patent,23 which was likely a fatal blow in that proceeding.

Conclusion

Although perhaps tempting in certain circumstances, incorporating a prior patent or application by reference may be fraught with potential dangers if used incorrectly. When such statements are used, prudent drafters should apply the same diligence to constructing the statement that they would give to any other part of a patent specification. Given the unforeseen consequences that can arise from even well-drafted incorporation statements, and the damage that poorly-drafted statements can inflict on a patent portfolio, patent prosecutors should carefully consider whether the benefits of incorporation by reference outweigh the associated risks.