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ARTICLE · 25 APRIL 2018

Draft Your Patents Carefully

Jones Day
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To understand the Federal Circuit's holding, it is helpful to understand the relationship between the applications in the patent family, all shown in the figure below.

United StatesIntellectual Property
Vishal Khatri
Vishal Khatri
Daniel Kazhdan
Daniel Kazhdan
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Droplets, Inc. v. E*TRADE Bank, No. 16-2504 (Fed. Cir. Apr. 19, 2018), is a cautionary tale on the need for careful patent prosecution. Because of an error in the priority claim, Droplets lost its right to claim an earlier effective filing date, and its claims were invalidated over its own PCT application.

To understand the Federal Circuit's holding, it is helpful to understand the relationship between the applications in the patent family, all shown in the figure below. On September 14, 1999, Droplets filed provisional patent application No. 60/153,917. Droplets then filed the Franco PCT ("Franco") and three applications that issued as U.S. Patents 6,687,745, 7,502,838, and 8,402,115. The '745 patent claims priority to the '917 provisional. The '838 patent's priority claim was to both the '745 patent and the '917 provisional. The '115 patent claims priority to the '838 patent and the '917 provisional, incorporates the '838 patent by reference, but does not claim

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