Giving Priority

There has been a lot written recently about the importance of filing patent applications as soon as possible.  Now that the US has moved to a First Inventor to File (FITF) patenting system, the importance of quickly filing an application has become obvious.   But obvious doesn't mean new:  filing an application as soon as possible has always been advisable.

The filing date of a patent application establishes a disclosure date for the invention.    And in a FITF system, this disclosure date is used to establish the inventor eligible for a patent when multiple inventors are claiming the same invention.  The disclosure date also establishes the cutoff date for the patent searches for novelty and non-obviousness.  To reject a patent claim, the USPTO can only use information that was publically available before the disclosure date.

Unfortunately, the strict use of the filing date gets complicated when an invention requires the filing of multiple applications.   This can happen in several situations:

An inventor may want to add new discoveries or improvements to the invention.

The USPTO may decide that an application is really two inventions and require that the inventor file two applications.  This happens in about 35% of textile related applications.  A typical scenario is when a new loom is designed to make a new type of fabric.  If the inventor filed a single application for protection on both the fabric and the loom capable of creating it, the USPTO would most likely issue a "restriction" requiring the invention to be split into two applications.

Sometimes in the examination process, the examiner allows some, but not all, of the requested claims.  In this situation, an applicant may decide to file a new application that splits the original application.   By doing this, applicants can clear the path for the allowed claims to issue as a patent.  At the same time they maintain their right to continue to pursue the disallowed claims through the new application.  

In each of these instances, an inventor would want to be able to file a new application without losing the benefit of the earlier filing date for the original invention.  This benefit is called “priority.”  When filing an application, the USPTO permits you to claim the filing date of a prior application.   This is done in the new application by including a reference specifically identifying the prior application and directly stating the type of relationship between the applications.  The types of relationship include the above situations.  In addition, the USPTO allows applications to claim priority to patent applications filed in other countries as long as the inventions are the same.

The big rule here is that applicants cannot claim the benefit of a prior filing date for material that was not disclosed in the prior application.  “New matter" can only claim the filing date of the application in which it is initially disclosed.  This leads to inventions having multiple disclosure dates for different components within the invention.

Below is a summary of selected patents that have been recently issued in textile related classification codes:

Midfoot Structure for a Sole Assembly for a Shoe:  A midsole structure of a sole assembly for a shoe improves a ride feeling and stability of the midfoot portion of the sole assembly during running. The sole assembly of the shoe includes an upper plate formed of a hard elastic member disposed on an upper side of a midfoot region, a lower midsole formed of a soft elastic member disposed under the upper plate. This lower midsole has a downwardly convexedly curved upper surface that forms a void relative to the upper plate and contacts the upper plate at the front and rear ends of the midfoot portion. The outsole includes a midfoot outsole with a ground contact surface arranged below the lower midsole, a heel outsole, and a forefoot outsole. The outsole members are discrete and separate.  Patent #: 8567093.  Inventor:  Sato.  Assignee:  Mizuno Corporation.

Shoe Construction Having a Rocker Shaped Bottom and Integral Stabilizer:  A shoe construction comprising an outsole constructed from a slip resistant material and a wedge shaped cushion member having a rounded and beveled shaped lower surface bonded to the outsole. A midsole body member is bonded to the cushion member having a torsion spring member secured to the midsole body member. The torsion member assists in stabilizing the shoe construction by directing an outer surface of the outsole to a preferred position, while the lower surface is constructed and arranged to provide a curved rocker-like surface whereby the outsole remains in contact with the ground, and requires muscle control, throughout a walking step.   Patent #: 8567094.  Inventor:  Lubart.  Assignee:  Shoe for Crews, LLC.

Modular Shoe:  A modular shoe includes an upper, a chassis releasably arranged in an interior of the upper, and a plurality of studs. Each stud is releasably attached to the chassis through the lower side of the upper. The lower side of the upper is clamped between the chassis and at least one of the attached studs.   Patent #: 8567096.  Inventor:  Scholz.  Assignee:  Addidas International Marketing B.V.

Article of Footwear with Detachable Upper and Lower Designs:  A sole and an upper attached to the sole. The sole includes a hard sole base forming an outline of the footwear and a mid sole resting on the sole base.  The mid sole made of a softer material than the sole base to provide comfort to a wearer. The upper has sock like construction using stretchable materials to conform to shapes of the foot. The upper is attached to the sole by straps passing through the upper allowing a degree of independent motion of the upper to conform to a foot.  Patent #:” 8567098.  Inventor:  Hsu.  No Assignee.

Jim Carson is a principal of RB Consulting, Inc. and a registered patent agent.  He has over 30 years of experience across multiple industries including the biotechnology, textile, computer, telecommunications, and energy sectors.  RB Consulting, Inc. specializes in providing management, prototyping, and regulatory services to small and start-up businesses.  He can be reached via email at James.Carson.Jr@gmail.com or by phone at (803) 792-2183.