may please the court i'm scott chambers for the past known or all parties agree that the relevant applications consider in this case are the fourth fifth and sixth application aug twenty ninth two thousand and eight when the six application was filed it met all three requirements of section one twenty and one twenty says that when the requirements are met and the applicant asks for a priority that effectively steps into the shoes for effectively it is given the priority back to the date that it's requested now given the rest of one twenty that means that when this application was filed on august twenty ninth two thousand and eight the six application was entitled and the application for six was pending your honor but it had already satisfy all the requirements of section one twenty and while it was still satisfying all the sections of one twenty that are required and applicant can do that but in fact if you don't ask for it and you put the public on notice that you are claiming all the way back something happening in another application has no effect in other words on august twenty ninth when this application when the six outlook ation was filed and when it satisfied all requirements of one twenty and ask for that priority what happened on august twenty ninth was it was affectively filed in through that when i was an examiner i certainly look through to see if there was you know additional material because i had to look at each claim and i had to decide if there's a cia he does this claim go all the way back or only part of the way back with the  decision that you aren't right there is no written aspect of the patent office to say that this is granted this priority or not how do we know what happened your honor the public is on notice because the applicant asked for this in other words that the applicant said i'm claiming all the way back to one nine hundred ninety seven and then if it needs to be done at a later point a court can go in and they can say ok well did they have the support for the claims back in one thousand nine hundred seven because they're claiming they do and so a court can do that at that point there's no when they ask is it well what your honor the the examiner or anyone in the public can look at that file and they can tell if on august twenty ninth did it did the exclaims that later issued satisfy all the criteria of one point we do that all the time it is in the real world looking at that particular patterns and if that is the case and if it was requested that  look when it comes up for examination and when it comes up for examination they can look and see it's not the day it was filed that's when that's why i mean i think that maybe you have an argument on this thing but it has to be really patent issues because that's the spect of law when i file a contract when i make a contract and they're both sign that contract even though it's not in front of the district court it's a valid contract but this is this is not  priority can change after filing your regularly does through the ins or through claims changes right every time an amended claim is final a new review has to be conducted and there may or may not be entitlement to priority the issuance to your honor that it is according to the statute it is in title when the criteria of one twenty are met it doesn't say when it's examined it doesn't say when it is used it says w application was itself modified so that in no fog or provided written description support for the six that location what happens then your are the statute is pretty clear about that when the criteria of one twenty are six claims for it if it is clear the fed doesn't disclose some of the things in the sixth application is the public support require them to go back through the prosecution history and figure out it used to be there but it's not there anymore you are correct your honor in this court has many times said that a review of a patent that does not consider the prosecution history is not competent and they have refused to embrace opinions of counsel where someone didn't look at the prosecution as you of course you have ok i will i will certainly attempt to control it when you are filing the application once you've satisfied the criteria of one twenty this court has said that the application shall without exception receive the benefit of the filing date that means that when this was filed in in two thousand and eight that it was effectively filed that they had the same effect as if it had been filed in one thousand nine hundred ninety seven so that when the fifth application came along later and was filed in two thousand and three well at that point it was already on file for six years how could the fifth application an entirely different application have any effect on it i mean even the m p e piece says it affects the instant application it doesn't say it affects all applications in the client and when you look at what the statute one twenty says you find that it does not go back in time this or this amendment occurred eleven years later so that this  n years after nine hundred ninety seven according to one twenty when this was filed it affectively was filed in one nine hundred ninety seven and then eleven years later somebody changes an entirely different application and that entirely different application says i'm changing the priority of this outlook asian but there is no evidence whatsoever that the six application was changed and you're saying ok it goes back in time a leaven years of just one of the negative consequences if a if you have a daughter application that's because the buyer could defeat your the sale of your daughter application and putting up roadblocks to sales an alien ability is not  best interest of the patent system so you would have a problem with you can't sell any intermediate application because they might you know disclaim priority can you put it in the contract right that says you can't change the property claim it seems like a very easily avoidable problem you know your honor you can put that into the contract and if they abide by the contract you're it is in reasonably good shape but the problem with that is that set takes care of that but the other other problem that you have is that suppose you file an application and then you file a c ip and that the examiner immediately says oh these claims with the new material in the c p they are claims that we're going to we're going to embrace that that i'm going to say that these are patent because they have the new material well normally and patent prosecution at that point you'd say oh going to take this issuance and i'm going to be able to show that i have a patent and i will can put file a continuation and go after the the subject matter that goes all the way back because i still want that i just don't want to hold up the entire set of claims in the patent office for it you know until it goes to the court and i have to you have to appeal it so you could you can take your claim to the c i p and you can disclaim the the unneeded priority and you can get the longer term that the one nine hundred ninety five back promises you and then you can continue because you've already filed an established priority as one twenty says you've affectively gone to that earlier date then you can file and seek claims to that broad subject matter so that's a second reason that this  negative consequences humans want ok i thought that was too but you know the other negative consequence would be that the the patent office when we look at the other criteria of one the one has invented a widget and the other one has invented a carburetor it goes in it gets filed at some later point they get allowance of the the carburetor and you can't an application and you use if you say i'm filing an application just to go after the widget and that i have two applications they're both claiming the same priority date they've effectively been claiming ship sheet it goes back in time you know and all of a sudden i don't have colo inventor show i'm not satisfying one one in addition in addition there is a problem back a time that mesereau sat up to so two aspects of one twenty say you don't go back in time and yet we're talking about this other aspect and saying quote it should the final point of o would say that inventor ship is involuntary but you could have filed the application and not had separate patterns unless it was a receiver if required by the few but if it is it might not be restricted so in that case you're describing in the case in that declaration it was part of a restriction requirement but there is no reason to because you could also have the same exact scenario where a and b file something and then you file a continuation w just b and then you cancel b these inventor ship on the first one so it doesn't have to be required by the patent trademark office it could be that well i decided that because i needed to get these claims out somebody the date that the benefit claim is made in fact that is not true the examiner will look to about a claim statement to make sure that it correctly lists the dates for any prior applications and serial numbers and whatnot to meet the basic formalities but to karen t entitlement to priority even m p p section two sixteen provides the subject matter of the application i to be tied up that happens in the veterans case as we go back to the bottom of the plane except for so it's a problem that well i was addressing what counsel is that but there is no problem you're correct in fact that's exactly what section one twenty s that if it if it is right and somebody goes back and checks it later that year it's all treated as if the effective filing date was the first so why i mean let me let me just segue to another point that was raised and some judge moore's questions which is is the the office's view that if the sixth application had issued as a patent before all of this other stuff happened that he would be entitled no to that day you don't think even you don't think the difference the distinction to be drawn here is whether it was just an application or whether or not the patent should actually issue i don't think it's a general matter that's correct under this court's precedent and cyclopedia  before the death even if i'm sorry even if it said he had happened in this case there was something that happened during the prosecution and the six application that would indicate that that isn't correct and what what that was was filed a thirty five pages of response explaining how the invention claimed in the six application was patently distinct in other words not supported by one twelve by applications one through contention what was really going on here at least the attorney who handled the prosecution of the fifth in the six application believed that applications one through four did not support the claims in the six application and so for that reason that's an additional reason that supporting our claim here and now that there isn't one twelve support as required by section one twenty four the claims in the six seven cation and although not examined for that sort of support and seventeen today but at least the attorney the contemporaneous writings evidence at least it even if we had your hypothetical it still wouldn't wear you know the be changed at that time i believe that would be the correct result however you don't need to go that far to resolve this case but i do believe looking at the opinions in encyclopedia  there are those like the correct ones this issue that miss kelly suggested that there was an argument regarding the six application not having support in the fourth to the first that issue regarding the six that was not raised if what she is saying it is is true for the fifth application but this was not part of the record and it was never raised if it was an issue it should have been raised but more importantly she's arguing a point on one twelve for the fifth application was that was not at issue as stated by the p t a be so all of her discussion about how the six application wasn't supported was really that the fifth application was not supported and if you look at footnote two of the solicitor's brief that will become clear because she says they added glycine well the claims in the fifth application that deal and embrace  glycine with this substance you know that wasn't part of the original file so let's look at some of those other issues that we want to touch on the legal definition of entitlement which is what is used by the statute treats that in title meant to be granted it mediately upon meeting the legal requirements there's no need for some examination i'll reply brief covers this and pages ten to thirteen more quotes black's law dictionary and says what in title but means it is something that brief it's quite clear that we don't mean vested forever you can always discuss discount it you could always get rid of the six application if you said in the six application we no longer claim priority but the six application was affective  filed more than eleven years before this change came and more than eleven years it is that it's better to follow the judge lauri's when he was speaking for this court the idea that once a criteria of one twenty or mack the applicant shall without exception receive the benefit you affectively step into those shoes now in terms of your question judge prose regarding you know what if a pat already issued and the p t o his position that well if the patent already issued it would still be a problem well if if if that's the case what that really means is that there's a new way to extend your term even if your patent issues and you've got a license and everything like that until the end of the term you can just take one of those intermediates and you can kill a kill the priority and once you kill the priority your  on or there's no requirement that all the intermediate applications forever and always retain the same claim for already thank you