patent assignment right to claim priority

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Don’t break the chain – ensuring valid claims to priority based on US patent filings has become easier.

Guest Post by Alex Korenberg of Kilburn & Strode (UK)

The Paris Convention (and its implementation by the EPO and UKIPO) requires that the person filing a priority claiming application is the same as the person who has filed an application from which priority is claimed, or his or her successor in title. This has in the past caused problems for US based applicants on several occasions, since a mismatch cannot be fixed retrospectively.

The problematic fact situation was that the chain of title from the inventor(s) on the US priority application to the applicant (e.g. assignee company) on a priority claiming second application (e.g. a PCT application) could not be established at the second (e.g. PCT) filing date. The result in several UK court cases and EPO Board of Appeal decisions was that the claim to priority was found to be invalid, leading to a loss of the patent due to intervening disclosures in the priority year (see here http://www.kilburnstrode.com/resources/news/2011-4-21-ensuring-valid-priority-claims-for-us-originating-applications for a briefing note describing this issue in more detail). The only way to be certain the chain of tile was in place was to have assignments in place from all US applicant/inventors to the applicant on the second application prior to filing it.

The implementation of the provisions of the AIA now provides a convenient way for US patent filing companies to ensure this issue does not affect their foreign filings, making use of the ability to file the US application in the name of the assignee company, rather than the inventors. By filing in the name of the assignee company, there is then no question as to the chain of title in relation to the priority claim for a subsequent PCT or other foreign application filed in the same name. Unlike the entitlement to claim priority, the entitlement to grant of a patent can be settled in Europe after filing and at any time before grant, or even after grant by appropriate assignment. Using the provisions of the AIA to file in the name of the assignee company, the question of assignments from the inventor to the assignee company ceases to be a potentially fatal issue if not settled during the priority year.

The interaction between an invention’s chain of title and the ability to claim priority has been a niche pursuit for aficionados of the nether regions of patent law, but this may be one point where the harmonisation of patent law as a result of the AIA can provide readily available benefits for US patent filers. Of course, the complexity of the interaction of earlier inventor filed applications and the Paris Convention will still be around to keep lawyers busy for years to come.

30 thoughts on “ Don’t break the chain – ensuring valid claims to priority based on US patent filings has become easier. ”

Really Malcolm, are you that desparate to troll that you trot out this nonsense on a thread almost a full week old?

Tell me about spam control on your emails. You still haven’t done this yet.

There really are some here who come to learn as well as teach.

Why don’t you teach everybody again how to train mail room staff to screen registered letters addressed to attorneys so that letters containing prior art relevant to a patent application can be thrown away without the attorney learning of them?

Tell everybody about how well that works, anon. Also please name a single firm that uses such a screening system and let us know the name of their insurance provider. We all thank you in advance for your wisdom. You are the expert on this subject, after all.

I’m a bit concerned that the wording of 119(e)(1)which relate to an application “by an inventor or inventors named in the provisional application” and 35 USC 120 which relates to an application “which names an inventor or joint inventors”. I’m not convinced that an Assignee can have a valid priority claim – even though authorized to file under 35 USC 118. The priority statutes STILL relate to inventors – not “Applicants”.

Thanks again, “different UK atty”. Now I’ve skimmed the old 2007 thread. Amusing to see old acquaintances there like JAOI(TM). The Link to the Decision no longer works but the thread alone was enough.

Rader CJ just urged us all to pay attention to the statutory language. This is just what was urged on me when I first started in this profession. Robin Jacob used to express his exasperation when the parliamentary draftsman insisted on tinkering with the wording of the EPC. So it is, that one looks at these various Paris Convention priority cases and thinks it would be a lot easier if the legislator had adopted Paris 4A verbatim.

In the US, throw into the mix that employment law is state by state, and that many small corporations may not be savvy enough to have ‘proper’ assignment clauses in their employment agreements – e.g. Stanford, and that these small corps may be acquired later by larger corporations, who may not be diligent, or if state law does not allow, may not be able to alter existing employment agreements, it becomes far more tricky.

There is a method to my madness for posing the hypothetical.

Ah yes. Indeed, BSX v Medtronic. I will look it up and revert. It is tricky enough when every inventor is an employee working under a contract of employment. But when there is more than oine inventor, and one at least is a consultant rather than an employee, it can get quite tasty.

I think you mean Boston Scientific SciMed v. Medtronic Vascular. link to patentlyo.com

I thought at the time that it didn’t comply with the USA’s obligations under the Paris Convention. The CAFC held that under 119(a), the foreign priority application had to be filed with the knowledge and consent of the inventor, at the time of filing. There’s no requirement for that in Paris.

All that’s required under Paris is that the earlier priority application is “duly filed” under the laws of the country concerned. Yet the CAFC held “that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here.”

In fact, as came out in the comments in the thread, in some countries (including UK) a patent application can be filed quite legitimately without the inventor’s knowledge and consent at the time, as long as the legal ownership of the invention is sorted out before the patent is granted.

I think that the SciMed court was influenced by a desire to uphold the inventor’s natural right to his invention. Dennis’s post says “Under the court’s ruling here, 35 USC 119(a) provides a personal right to the inventor.”

So it is not clear to me how this would have been decided post AIA, now that US law no longer requires the inventor to be the US applicant. Note that section 119(a) does not actually refer to the inventor.

My hypothetical, where original applicant A subsequently assigns all rights to applicant B, is no doubt a business situation that in principle would be encouraged in the USA and if possible facilitated by the US courts, if it helped to develop and exploit an invention profitably for both parties.

However, SciMed seems to require that A filed the original UK patent application with the knowledge and consent of B. Yet at the time of the original filing, A should have been keeping the invention confidential, and quite possibly neither A nor B knew that the other existed.

I got the impression that there was probably a whole pile of unusual factual circumstances underlying this SciMed decision, so it may have made sense in the case concerned. But if so then those factual circumstances didn’t come out in the decision, and it appeared to have more general applicability. Which means that there could be harmful consequences if the decision were taken as a precedent in future cases with more normal circumstances.

(Disclosure: I was ‘A different UK patent attorney’ in the SciMed comments thread.)

Interesting, IPMan. Common enough situation, that rights are divested during the Paris year, from A to B.

Me, being not a US lawyer, I wouldn’t dare to hazard a guess how a provision of the AIA would be construed by the courts of the USA. Perhaps a comment will come, from somebody competent to do so.

Until now, under FtI, it has hardly mattered, whether or not the foreign priority date is given full force and effect. But now that PTO filing Dates are of paramount importance, These issues are set to get more interesting.

And by the way, was there not some interesting debate in the US Courts one or two years ago, about the value of a foreign priority on some medical device invention? That case also involved a trap for the unwary, if i remember right. There was a catchy name for the involved inventor, like da Vinci, Leonardo, Lorenzo or something like that.

I have doubts that a *change* of applicant would fix the situation, as this would not affect the identity of the applicant at the time the claim to priority was made. Reading the UK case law, what you would need is a correction with ab initio effect to make the applicant the applicant on the priority application at the time the PCT was filed.

“It would be a bit pointless to debate which is “better” in this regard, 4A or 119(a). First thought though is that 4A is an unnecessary trap for the unwary and that 119(a) is the fairer and more pragmatic way.”

i think that the EPO/UK interpretation of Paris 4A is an unnecessary trap, but that’s not the fault of 4A itself. You could interpret 4A to allow an assignment of priority right to be executed retrospectively, after the filing of the application which claimed the priority. But the EPO and UK case law doesn’t allow that – and that’s the trap.

I think that the difference with 119(a) is that Paris 4A gives the priority right to successors in title of the original foreign applicant, but 119(a) doesn’t.

However, 119(a) instead has an approach which is in one respect more liberal. It allows an inventor-applicant to claim the priority, even though he himself didn’t file the foreign application, and he isn’t a successor in title to the foreign applicant company. That because of 119(a)’s reverse provision that allows for the possibility that the foreign application was filed by the successor in title (assign) of the inventor-applicant.

Pre AIA, when the US applicant had to be the inventor, that more liberal approach has been enormously important in simplifying priority claims.

But I can see a problem looming, post AIA. Suppose Company A files an originating UK patent application. A few months later, A assigns all rights to the invention, including the UK patent application and the right to claim priority from it, to Company B. Then B wants to file a corresponding US application in its own name, and claim the priority. Can B do so?

Under Paris 4A, the answer should clearly be yes. B is the successor in title of A. But under 119(a) the answer is quite possibly no. The original foreign applicant A is not the legal representative or assign of the US applicant B.

“ I think part of the problem is that US patent attorneys’ understanding is naturally based on the priority provisions in 35 USC 119(a). But 35 USC 119(a) doesn’t correctly implement the Paris Convention, Article 4A. ”

It is interesting to see another’s defining of the problem being a country’s national law and the effects of that national law.

While recognizing the tendency of being “an ugly American,” do you recognize the tendency to confuse poly-nationalism with an ideal that patent law is trans-national? Throughout most of the world, and especially in the U.S., patent rights still are very much a matter of national law, and pertain to rights within a country.

I would counter with a defining problem that it is assumed that law should be universal. The distinctiveness of American culture of the rugged individual runs deep and cannot be easily dismissed nor ignored.

Coming from the other direction, into the USPTO. Indeed. Another great comment from IPMan.

I had myself wondered, decades ago, whether the prosecuting patent attorney would need to procure from the client company an assignment from the company to the Inventor, of the right to claim priority under the Paris Convention when applying for a patent (in the name of said Inventor) at the USPTO at the end of the Paris priority year.

It would be a bit pointless to debate which is “better” in this regard, 4A or 119(a). First thought though is that 4A is an unnecessary trap for the unwary and that 119(a) is the fairer and more pragmatic way.

In passing, I am wondering if there is anything in the PCT that corresponds to the EPC’s Article 58 “The right to a European patent shall belong to the inventor……”

“… when it comes to the fundamental provisions of the Paris Convention, some US patent attorneys simply don’t “get it”. […] Now the USA has signed up to Paris, undertaking to conform its domestic law to the fundamental provisions of the Paris Convention.”

I think part of the problem is that US patent attorneys’ understanding is naturally based on the priority provisions in 35 USC 119(a). But 35 USC 119(a) doesn’t correctly implement the Paris Convention, Article 4A.

Paris Article 4A starts by looking at the applicant of the earlier application. It gives the right to claim priority to the applicant of that earlier application. Or to the successor in title of that earlier applicant.

So if you file a US application based on an earlier foreign application, the right to claim priority should belong to the applicant of the original foreign application , or to his successor in title.

But in fact, 35 USC 119(a) is the wrong way round. Instead of looking at the original foreign applicant, it starts by looking at the applicant of the domestic US application.

It then says that the US applicant has a right to claim priority if he (the US applicant) had filed an earlier foreign application. Or if the legal reresentatives or assigns of the US applicant had filed an earlier foreign application.

If the US had a more correct implementation of Paris, then on a strict interpretation, that would have caused problems pre AIA. The US applicant had to be the inventor. The inventor would strictly have needed an assignment of the Paris priority right from the foreign company that filed the foreign application. Then you would normally want to get him to assign the whole US application back to the foreign company.

The thread is marred by gratuitous snideness from MaxDrei and Malcolm.

Go figure. Yet another example where the red cape of ‘anon said’ affects the little circle members by shutting off their minds and blindly charging toward the cape.

El toro. You do know the bull does not best the matador, right?

Thank you for your considered reply. There really are some here who come to learn as well as teach.

“However, in that event, you could instead ask the US court to order the losing party to execute an assignment, which could be registered in the UK without the need for separate UK entitlement proceedings.”

Note that the registration of this assignment would only regularise the ownership of the UK national phase of the PCT application. Unless the assignment (or perhaps the court order) happened before the date of filing of the PCT application, I think it still wouldn’t save the validity of the priority claim.

The Paris Convention right to claim priority belongs to the applicant who filed the earlier case, even if he wasn’t entitled to file it. The EPO and UK case law means that this right to claim priority has to be assigned to the PCT applicant before the PCT application date.

I suppose there might be an argument that the earlier application wasn’t “duly” filed (in the words of Paris Article 4), because the applicant wasn’t entitled to file it. But that would mean that no-one was entitled to claim its priority.

Nice piece. Thanks Alex, thanks Dennis.

The comments thread is helpful too, for revealing that when it comes to the fundamental provisions of the Paris Convention, some US patent attorneys simply don’t “get it”.

In Europe there is a heirarchy of patent law. National law must conform the the European Patent Convention and, in turn, the provisions of the EPC must be in conformity with Paris. That is to say, Paris tops the lot.

Now the USA has signed up to Paris, undertaking to conform its domestic law to the fundamental provisions of the Paris Convention. You know, comity, that sort of idea.

Clients therefore would expect the competence of US patent attorneys to extend to a basic grasp of the provisions of the Paris Convention. Those lacking it will no doubt be grateful to Alex, Dennis and, even more so, “IPMan” above.

I don’t know about “a bit unlikely” IPMan. English understatement, perhaps. Anon’s hypo on his entirely different legal issue (simultaneous filings by employee and employer on the identical subject matter on the identical date) might occur once in a blue moon. But what Alex writes about could be happening all the time, in routine practice, and so will likely (as Alex observes) provide solid basis for litigation outside the USA for at least the next 15 years.

Think: how many times do American employers file PCT in the name of the Corporation, claiming Paris Convention priority from a domestic USPTO filing in the name of the inventor? In what proportion of those PCT filings does Employer take the trouble to secure from Employee Inventor, before filing the PCT, an Assignment of the Right to Claim Paris Convention Priority? I had thought that too was routine good practice, but can I count on that being the case?

So, thanks again, for running the piece and alerting those who had not yet understood the danger.

“Multinational Corp has a worker in the US who makes an invention. Multinational Corporation has incorrectly assumed that it has a right to the invention of this worker […] Unknowingly to each other, each of the actual inventor and Multinational Corporation file PCT applications with the US receiving office on the same day. What happens next?”

An interesting question, but not the one that Alex’s original post addressed. In fact, there are several separate issues here.

Alex’s post was about who has the right to claim priority from an earlier application. The answer is clear from the Paris Convention, Article 4. The right to claim priority belongs to the person or company that filed the earlier application, or his/their successor in title.

So if Multinational Corp filed the earlier application in their own name, they have the right to claim priority from it. If the inventor filed the earlier application, and hasn’t assigned the right to claim priority, then Multinational Corp does not have the right to claim priority.

This is quite separate from the ownership issue you have raised – is it Multinational Corp or the inventor which owns the rights to the invention, and is thus entitled to be granted a patent for it?

The ownership question depends on the employment contract and the law which governs it – presumably US law (maybe US state law – you tell me).

In the UK, at least, either side could file entitlement proceedings in the UK Intellectual Property Office, claiming ownership of the other’s patent application as far as the UK designation is concerned.

But the UK IPO would then need to apply the appropriate law, presumably US law. They would have to ask for evidence from both sides about the applicable law, and make their decision accordingly. Unusual, and I’m not aware that it has ever happened, but I can’t see any reason in principle why it would not be possible.

So you might do better getting an order from a US court first, saying that you are entitled. Then file that in the UK IPO proceedings. However, in that event, you could instead ask the US court to order the losing party to execute an assignment, which could be registered in the UK without the need for separate UK entitlement proceedings.

Note that all this is also independent of the question of who filed first. In fact, it could be raised even if only one party filed an application, but the other party claimed to be entitled to it.

If there were two applications with different filing and priority dates, that could also raise first-to-file novelty issues. However, your hypothetical sidesteps that by assuming both parties filed on the same day, and had no earlier priority date. In the absence of ownership issues (two inventors made the same invention independently and both filed on the same day) then both would be entitled to separate patents. A bit unlikely, though.

I should have said..

“(oligate assignee but no assignment yet EXECUTED):

Is this a viable fix for an application filed naming an applicant (obligate assignee but no assignment yet recorded):

1. File amendment to Request with IB under Rule 92bis, changing “inventors” to “inventors and applicants.” Do this prior to national stage entry (and preferably before WIPO publication.

2. Procure executed assignment thereafter and record.

No apologies needed – a much better post than Malcolm’s (granted, that is not difficult to achieve).

Quite the contrary – and oddly you would be the one challenging a hypo for its connection to a thread – my hypo is extremely germane to a particular point raised by the author, and in fact goes directly to avoiding that trap for the unwary by pointing out that the trap may still be sprung even with the AIA provision – at least in the US under US jurisprudence ( See Stanford v Roche ).

I know what my answer would be – and that’s not the point of my posting the hypo. Rather than charging at the red cape of “anon said,” perhaps you care to actually explore the situation?

Shift the cost of true examination to the parties involved in any enforcement, and let the rest of the 99.8% of patents not incur that high cost/law value (seemingly) step.

My hypothetical then: a Multinational Corp has a worker in the US who makes an invention. Multinational Corporation has incorrectly assumed that it has a right to the invention of this worker (there are many ways this can happen through various paths such as acquisition of a smaller company that did not have an assignment policy). Unknowingly to each other, each of the actual inventor and Multinational Corporation file PCT applications with the US receiving office on the same day.

What happens next?

Why don’t you tell us what should happen? The hypo has little to do with avoiding the trap for the unwary discussed in the post. The passage you quoted is also not “strictly true” (according to your logic) when a second corporation files a PCT application claiming priority to a first corporation’s application using the first corporation’s name (intentionally or inadvertantly).

And if you don’t assign me now You will never assign me again I can still hear EPO saying you should never break the chain And if you don’t assign me now You will never assign me again I can still hear EPO saying you should never break the chain

Chain…keeps us together (run into the shadows) Chain…keeps us together (run into the shadows) Chain…keeps us together (run into the shadows)

…with apologies to L.B., S.N., M.F, C.M,, J.M.

Alex, many thanks for the heads up.

The issue is the unexamined patent.

Or perhaps,

It is worth not examining issued patents.

“ By filing in the name of the assignee company, there is then no question as to the chain of title in relation to the priority claim for a subsequent PCT or other foreign application filed in the same name ”

At least in the US, this is not strictly true, as US law still maintains that only a real person can be an actual inventor (foreign law may differ on this point). My hypothetical then: a Multinational Corp has a worker in the US who makes an invention. Multinational Corporation has incorrectly assumed that it has a right to the invention of this worker (there are many ways this can happen through various paths such as acquisition of a smaller company that did not have an assignment policy). Unknowingly to each other, each of the actual inventor and Multinational Corporation file PCT applications with the US receiving office on the same day.

What happens next? In the US? In other foreign countries such as GB and DE?

The unexamined patent is not worth issuing.

Thank you for the comment. Apologies for the broken link, this has now been fixed.

I believe that assignments recorded a the USPTO become part of the public record. As far as the validity of the priority claim in Europe is concerned, however, it is not essential to record the assignment. All that matters is that the chain of title is in place prior to filing the second application and that documentary evidence of that can be produced if challenged.

Your link points to a K&S page, with the following invitation at the end:

Please click here to download full copy of the ‘Ensuring Valid Priority Claims for US Originating Applications’ briefing note.

When I click link to kilburnstrode.com I get a 404.

I occasionally see in PAIR file wrappers evidence inventors balking at signing assignment papers. Are assignment deeds part of the public record at the USPTO?

Comments are closed.

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IP Law Bulletin

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe,  an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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Practice points

The entitlement of the intended Convention applicant to the priority rights of all the priority applicants should always be checked before filing the Convention application.

Where necessary, ensure that assignments of the priority rights, that are valid assignments under the relevant national law, have been executed by all the priority applicants in favour of the intended Convention applicant before filing the Convention application.

We recommend that these assignments should at least be in writing, preferably signed by both parties (see T62/05) unless this is clearly not required under relevant national law, and preferably should expressly assign the right to claim priority (in addition to any rights in the invention and the priority application).

If suitable assignments have not been put in place, it may still be possible to establish the Convention applicant’s title as successor through relevant applicable national law e.g. rights may have vested by operation of law or contract or the existence of rights in equity may suffice.

Where there is any doubt, assignments should be completed

If not all the relevant assignments are in place or there is any doubt as to the intended Convention applicant’s entitlement, the applicants for the Convention filing should include those priority applicants (or successors in title through valid assignments, etc.) who have not assigned their rights to the intended Convention applicant.

If the Convention applicant was not the successor in title to all the priority applicants at the Convention filing date, correction may be possible. Correction should be considered at an early stage as it may be more convenient to deal with this under the PCT rather than regionally/nationally. However, correction needs to be approached with caution as it could make public a possible priority problem.

Retroactive assignments may be an alternative route to establishing succession under relevant national law, if these would be treated, as between the parties and in relation to third parties, as entered into prior to the Convention filing date. However these may well not be acceptable to cure a priority problem in the EPO and the UK in light of the approach in T62/05 and the comments in Edwards v Cook.

Relevant provisions

Article 4A(1) Paris Convention (Stockholm Revision):

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

Article 87(1) European Patent Convention:

Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.

In the UK, the priority date of an invention is dealt with by section 5 Patents Act which, by section 130(7), is to be construed in conformity with the corresponding provisions of the EPC (including Article 87).

Relevant case law – UK

KCI Licensing Inc & Others v Smith & Nephew Plc – UK Patents Court: Arnold J – 23rd June 2010

One of the issues in this infringement action was the validity of the priority claim to European patents (UK).

The US priority applicant was Mr Lina.  The PCT applicants were Mr Lina and Mr Heaton for the US, Kinetic Concepts Inc (Mr Lina’s employer) for all designated states except the US and Mediscus Products Ltd (Mr Heaton’s employer and a wholly-owned subsidiary of KC Inc) for GB only.

Arnold J found that KC Inc was the sole applicant for the PCT application in so far as it related to the European patents; Mediscus was only a co-applicant in relation to the GB national which was not in issue – see further comments below.

The principal question to be addressed was therefore whether KC Inc was a successor in title for the purpose of validly claiming priority.

Arnold J said that it was common ground that “successor in title” means successor in title to the invention, which was also common ground in Edwards v Cook, referred to below.

A Confidentiality Agreement between Mr Lina and KC Inc contained an express assignment of all his rights in inventions conceived or developed by him during his employment and a further assurance to enable the company to file patent applications for the inventions. Although the Agreement was governed by Texas law, no evidence as to Texas law was put forward and it was therefore common ground that it should be assumed to be the same as English law.

Arnold J held that an assignment of rights in a future invention was effective, under English law, to assign legal title to the invention to KC Inc and that therefore KC Inc was Mr Lina’s successor in title at the date of the PCT Application. Alternatively, if an assignment of a future invention could not convey the legal title, the Agreement had transferred the beneficial interest in the invention, including the right to file patent applications: this was sufficient to make KC Inc the successor in title to Mr Lina for the purposes of claiming priority, even if KC Inc had not acquired the bare legal title; he referred to J19/87 in support, which is discussed below.

He commented that the operation of Article 4A Paris Convention and Article 87(1) EPC, being provisions of international treaties, could not depend upon the distinction drawn by English law, but not by most other laws, between legal and equitable title.

Thus,“when determining whether a person is a “successor in title” for the purposes of the provisions, it must be the substantive rights of that person, and not his compliance with legal formalities, that matter”.

This appears to be a more relaxed approach than that adopted by the EPO Board of Appeal in T62/05, discussed below.

There was an issue over whether Mediscus was named as an applicant for the EP(UK) or just the GB national (which was not the subject of the proceedings) and whether Mediscus was entitled to rely upon the priority claim.  The case was contrasted with Edwards v Cook (see below) where there had been 3 priority applicants and one PCT applicant which was the successor in title to the rights of only one of the priority applicants. Having found that Mediscus was not a co-applicant of the EP(UK), Arnold J nevertheless went on to consider whether, if he were wrong, this would adversely affect the priority claim.  KCI argued that KC Inc had agreed by conduct to transfer part of its interest in the invention to its subsidiary Mediscus and that this was sufficient to make Mediscus a successor in title for the purposes of claiming priority and that no greater degree of formality was required.  Arnold J accepted this submission and held that the priority claim would therefore not be adversely affected if Mediscus was held to be a co-applicant. Arnold J’s decision appears to be based on the premise that all the PCT applicants had to be successors in title to the priority applicant for the purpose of validly claiming priority.

However, it was accepted that the PCT application disclosed the same invention as that disclosed in the priority application. Mr Heaton had not in fact contributed to the invention and Mediscus, his employer, was named purely as a device for filing the PCT application through the UK-IPO.

Arnold J’s decision does not therefore deal with the situation where the Convention application contains added inventive matter. Since the added inventive matter cannot in any event benefit from the priority, it is reasonable to argue that the addition of a non-successor co-applicant for the Convention filing should not adversely affect the validity of the priority claim for the invention described in both the Convention filing and the priority application.

Edwards Lifesciences AG v Cook Biotech Incorporated – UK Patents Court: Kitchin J – 12th June 2009

The validity of the priority claim was also in issue in this revocation and infringement action. (The subsequent appeal was decided on 28th June 2010 on the issue of obviousness and so it was not necessary to review Kitchin J’s findings on the priority issue.)

The US priority application was filed in the names of 3 inventors: Obermiller, Osse and Thorpe. The applicant for the PCT application, from which the UK patent in suit derived, was Cook Biotech Incorporated.

For the purposes of Article 4A(1) Paris Convention, Kitchin J decided that “successor in title” must mean successor in title to the invention, as the parties before him had agreed. He added that “a person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which the priority is claimed or if he is the successor in title to the person who filed that earlier application”.

It was accepted that Cook was entitled to Obermiller’s rights via his contract of employment. Osse and Thorpe were not employees of Cook; they assigned their rights to Cook after the PCT filing date and before grant of the patent in suit.

The transcript of the hearing shows that the assignments were expressed to be effective from the priority date i.e. they were expressly retroactive. During the hearing, Kitchin J referred to the existence of case law to the effect that retrospective assignments “might be good between the two parties to the assignment but cannot properly affect the interest of third parties”. In the event, Cook appears not to have relied upon the assignments being retroactive but focused on the argument that assignment before grant was sufficient.

Kitchin J held that the priority claim was invalid because, at the filing date of the Convention application, Cook was neither the applicant for the priority application nor the successor in title from all the applicants for the priority application.

The assignment of the rights of Osse and Thorpe to Cook after the Convention application was filed (albeit that the assignments were worded to have retroactive effect) did not help because it remained the case that Cook was not entitled to claim the priority at the Convention filing date.

In his decision, Kitchin J stated that “any other interpretation would introduce uncertainty and the risk of unfairness to third parties”.

Kitchin J considered that his decision was consistent with EPO case law, in particular referring to T62/05 and J19/87 which are summarised below.

Relevant case law – EPO

T62/05 – Technical Board of Appeal – 14th November 2006

In this EPO case, the priority document was a Japanese filing in the name of Nihon GE Plastics KK, a Japanese company. The Convention filing was a PCT application in the name of a US company, GE Company, which owned a majority share in the Japanese priority applicant.

Under opposition, the validity of the priority claim was questioned.  GE Company then assigned the European patent to Nihon GE (without any retroactive wording or choice of law clause) in an attempt to save the priority claim.

The Board of Appeal said that this assignment was not relevant to the question of whether GE Company was entitled to claim priority from the Japanese priority application as at the Convention filing date. GE Company could only be considered as the owner of the right to claim priority provided it was established that the succession in title from Nihon GE to GE Company occurred before the end of the 12 month period starting from the filing date of the priority application.

Although the assignment did not state that it was retroactive (i.e. nunc pro tunc), this would probably not have made a difference to the outcome in light of the Board’s finding that entitlement to claim priority must be established at the date of the Convention filing or at least within 12 months of the priority date.

It was also argued that there was an understanding that GE Company was entitled to file for European protection and claim priority, with some inconclusive documents said to evidence this. No evidence was put forward asto how this understanding and the documents should be construed under any relevant national law and as to what law would be applicable.

The Board of Appeal said that priority rights are assignable independently of the corresponding patent application and may be restricted to specific countries. It then went on to consider the requirements for assignment of the priority rights in relation to the filing of a European patent application. It decided that the transfer of priority rights must be proven in a formal way and that it was reasonable to apply an equally high standard of proof as required for an assignment of a European patent application by Article 72 EPC i.e. in writing and signed by or for both parties.

The Board of Appeal decided that, even if an intention to transfer priority rights (i.e. before the PCT filing) might have been discerned from the various documents relied upon, this intention had not been finalised in a form that would indubitably establish that the transfer of the priority rights for the filing of a European patent application on the basis of the Japanese priority application had taken place before the end of the 12 months Convention period.

Of interest here is the fact that the Board did not consider whether any relevant national law might be applicable in determining the question of entitlement to the priority rights, by contrast with J19/87 and T1008/96, summarised below. No evidence on the relevant national law having been submitted, the Board considered the matter under the EPC. As the EPC makes no provision for the assignment of the right to claim priority, the Board applied the same standards for the valid transfer of such rights as apply under Article 72 for the valid transfer of a European patent application: in writing and signed by both parties.

J19/87 – Legal Board of Appeal – 21st March 1988

In this case, national law was considered in evaluating the validity of the priority claim.

The priority document was a UK filing by the inventor, Mr Belcher, who then assigned his rights in the invention, the UK application, the right to file further applications and the right to claim priority to National Research Development Corporation (a UK entity). NRDC later signed an assignment back to the inventor of the rights in the invention and the application but this document was not signed by the assignee, as was required at the time for a valid legal assignment of a UK patent application. The inventor subsequently filed the EP Convention application in his own name and then assigned both applications to Burr-Brown Corporation.

The validity of the priority claim became an issue when Burr-Brown sought to correct the EP Convention applicants ab initio to NRDC and Mr Belcher, arguing that the assignment from NRDC to Belcher was not effective as it was only signed by NRDC and that the European application contained additional inventive matter over the UK application for which Mr Belcher was the inventor.

In this case, Burr-Brown was invited to file a legal opinion as to the effect under English law of the assignment from NRDC to Mr Belcher that had only been signed by the assignor. The subsequently filed opinion of Nicholas Pumfrey (then, a UK barrister) was to the effect that the assignment was a valid legal assignment of the rights in the invention (making the assignee a successor in title of the inventor to the invention) and gave the assignee an equitable interest in the UK priority application.

Mr Pumfrey also said that, as an owner in equity of the priority application, the assignee was entitled to claim priority from that application as a successor in title (making the assignee a successor in title to the priority application under Article 87).

The Board relied on this in finding that there was a valid priority claim.

T1008/96 – Technical Board of Appeal –  25th June 2003

Again the Convention applicant differed from the priority applicant and the validity of the priority claim was raised in opposition proceedings. Both applicants were Italian and the priority documents were two Italian utility model applications. The Board stated that the question of entitlement should be answered in accordance with national law. Because of a conflict of evidence as to whether the Convention applicant was indeed the successor in title under Italian law, the priority claim failed.

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.

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European Patent Office Makes Major Changes in Priority Entitlement

The Enlarged Board of Appeal of the European Patent Office (EPO) has issued a new dual decision – G1/22 and G2/22 – dealing with the assessment of priority rights at the EPO. The decision represents a significant break from the previous practice of the EPO and seems to adopt a much more ‘pro-applicant/patentee’ approach when assessing these rights and their effects on European patents and patent applications. In particular, the onus on the applicant to demonstrate their right to claim priority has been greatly reduced, with the threshold for opponents attacking this right in opposition proceedings now significantly higher.

The two key questions answered by the Enlarged Board of Appeal are:

• Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) of the European Patent Convention (EPC)?
• If question 1 is answered in the affirmative, can party B validly rely on the priority right claimed in a Patent Cooperation Treaty (PCT) application for the purpose of claiming priority rights under Article 87(1) EPC in a case where:
• A PCT application designates party A as applicant for the US only and party B as applicant for other designated states, including regional European patent protections.
• The PCT application claims priority from an earlier patent application that designates party A as the applicant.
• The priority claimed in the PCT application is in compliance with Article 4 of the Paris Convention.

In summary, the board’s answer to both questions is an emphatic yes .

In more detail, referring to the first question, the board drew a clear distinction between competency to ‘decide a dispute as to whether a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application’, where national courts are competent, and priority rights, where the board held that ‘no national laws are involved when a priority right is created or claimed for a subsequent application’. The board further reasoned that if the EPO was not competent to assess priority rights under its own law (i.e., not applying national law), then ‘situations could arise in which the EPO has evidence potentially affecting the patentability of an invention but cannot use such evidence in its decision on patentability’. This stems from the effect a valid priority right has on the assessment of prior art and is, evidently, a situation which is desirable to avoid. This scenario also is clearly distinct from entitlement proceedings, where the EPO is not competent, as the EPO’s assessment of patentability of the invention, and the prior art, should not be affected by the identity of the applicant (in part because the EPO does not provide carte blanche grace periods).

Accordingly, the board has decided that the EPO is competent to determine whether a priority right is validly claimed – i.e., whether a party is the successor in title required by the EPC – and that this assessment should be made using its own law and not the national law of the relevant member states. Furthermore, the board has decided that ‘the autonomous law of the EPC should not establish higher formal requirements than those established under national laws that may be relevant in the context of a European application’, and moreover that ‘the EPO should adapt itself to the lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances’. That the transfer of a priority right should not need to meet the same threshold as the EPO requires for the assignment of a European application (i.e., in writing and signed by both parties) is directly stated: ‘[T]he autonomous law of the EPC should not require that the assignment of priority rights has to be in writing and/or has to be signed by or on behalf of the parties to the transaction’.

Indeed, the board’s decision even implies another change from the practice, to date, that the transfer of priority rights must have occurred prior to the filing date of the European application, providing the rationale that ‘[i]f there are jurisdictions that allow an ex post (“nunc pro tunc”) transfer of priority rights … the EPO should not apply higher standards’. It is cautioned, however, that ‘the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which priority is claimed for the subsequent European application’. That said, it is possible to add a priority claim to a European patent application 16 months from the earliest priority date, so there is – theoretically – a situation where an ex post transfer could be applied, though we expect the first cases to do so to be brought under significant scrutiny by third parties, although their ability to do so has been curtailed.

In line with the board’s new permissive approach to the transfer of priority rights, this ‘rebuttable presumption’ that the priority claim is valid ‘involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing’. This means that – for example, in opposition proceedings – an opponent cannot ‘just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to priority’. This higher burden on opponents, along with the more relaxed stance of the EPO, seems likely to reduce EPO proceedings – such as oppositions – where the validity of a priority claim on the basis of the patentee’s entitlement to claim priority is put to issue. It is important to note, however, that national courts will still have jurisdiction over granted European patents and are not beholden to the EPO’s approach or decisions. Thus, third parties are not necessarily prevented from raising this issue in national proceedings where a more stringent test might be applied.

Referring to the second question, it is perhaps unsurprising that the application of the answer to the first question has led to the board agreeing with the referring decision that ‘the mutual filing demonstrates – absent indications to the contrary – the existence of an implicit agreement between party A and party B, conferring party B the right to benefit from the priority for the EPC territory’. In order for this implied agreement to be questioned, the board considered that ‘evidence would be needed that an agreement on the use of the priority right has not been reached or is fundamentally flawed’. Situations such as those seen with pre-America Invents Act (AIA), US-originating PCT applications – where the US provisional priority filing is filed in the names of the inventors and the resulting PCT application designates the inventors as applicants for the US where, for example, their employer is the applicant elsewhere – appear to be officially resolved at the EPO for now.

Ultimately, the position adopted by the Enlarged Board of Appeal in response to the two questions at issue represents a significant softening of the EPO’s historically strict position on the assessment of priority. Whether this change in attitudes will be reflected in the courts of the EPO’s member states in the future – or whether applicants will potentially remain beholden to the EPO’s previous approach if they wish to enforce patent rights nationally – remains to be seen.

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Priority right - prove it or lose it

25 February 2021

In a recent appeal decision (T 407/15), an application was refused as obvious after the applicant failed to prove it had the right to claim priority.

The University of Western Ontario appealed against the EPO’s decision to refuse its application, EP2252901A. The application claimed priority from two US provisional applications, filed by applicant-inventors who were not applicants of the subsequent PCT application.

During the appeal proceedings, the Board of Appeal identified an article published by the inventors between the priority dates and the filing date. The article was considered to be particularly relevant to the claimed subject matter. As a result, the validity of the priority claims became pertinent to the application’s patentability.

Article 87(1) EPC states that “Any person who has duly filed […] an application for a patent, […] or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority”.

According to established EPO practice, all applicants of a priority application, or their successors in title, must be applicants of the subsequent application for a valid claim to priority.

CRISPR patent appeal decision: EPO maintains “all applicants” approach to priority

The EPO’s “all applicants” approach to priority was recently confirmed in the widely reported appeal decision T 844/18 (see our summary article: “CRISPR patent appeal decision: EPO maintains “all applicants” approach to priority”, 21 December 2020: https://dycip.com/all-applicants-priority).

In addition, any transfer of the right to claim priority must have occurred in advance of the filing date of the subsequent application. Although other jurisdictions allow retroactive transfers of priority rights, they are not accepted by the EPO.

In the present case, each of the US provisional applications specified that the University of Western Ontario was an assignee on their respective filing dates (and therefore in advance of the PCT filing date). However, no further detail of the assignment was included. The Board of Appeal decided that this was not sufficient evidence to establish a valid transfer of the right to claim priority from the earlier applications. In particular, the Board of Appeal reasoned: “This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While… the priority documents... appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.”

The EPC and the Paris Convention do not specify formal requirements for a valid transfer of priority rights. However, it is established EPO practice that an applicant/proprietor bears the burden of proving succession in title when the validity of a priority claim is called into question. Therefore, the University of Western Ontario was asked to provide evidence that it was entitled to claim priority from the earlier US provisional applications. However, it failed to do so. Consequently, the Board of Appeal decided that the application was not entitled to priority, and the claims were found to be obvious in light of the intervening disclosure.

According to established EPO case law, the independence of a priority right and the right to an application does not mean that a valid transfer of a priority right inevitably requires a separate and express assignment declaration. As such, the explicit transfer of a priority right may not be essential, when other evidence is sufficient. For example, in T 205/14 and T 517/14, an expert witness attesting to the applicant’s inherent right to claim priority from an application based on its employees’ service inventions, under Israeli law (the law of the country of employment and place of business), was considered adequate evidence of a right to claim priority. In addition, in the interlocutory decision of the opposition division relating to EP2203462B, an assignment of “the entire right, title and interest in and to any and all Letters Patent which may be granted therefor” was considered to implicitly include the right to claim priority, under US law (the law of the country of the priority filing, and the law governing the legal relationship between the parties).

It is clear from T 407/15 that merely indicating the transfer of the right to a priority application may not be sufficient to prove that the priority right had also been transferred.

Given that an applicant’s/proprietor’s right to claim priority in advance of the filing date may need to be proven for patentability, where not all of the applicants of a priority application are listed on the subsequent application, we recommend that an assignment is executed that specifically mentions the transfer of the right to claim priority.

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Claiming Priority at the EPO

10 March 2021

It is important to ensure that a patent application correctly claims priority.  There have been a number of cases before the EPO where this has not been done and the priority date has been lost, resulting in the application being refused, or the granted patent being revoked, due to prior art published during the priority period becoming citable.

What is the issue?

The right to claim priority from a priority application (e.g., a US provisional application) belongs to the applicant(s) of the priority application or their successor in title (Article 4 of the Paris Convention and Article 87(1) EPC).

The applicant(s) of the subsequently filed priority-claiming application (e.g., a PCT application) must have the right to make the priority claim at the time of filing.  The applicant(s) of the priority-claiming application have this right under the following circumstances:

• The applicant(s) of the priority-claiming application is/are the same as the applicant(s) on the priority application; or
• The applicant(s) of the priority application assigned the right to claim priority to the applicant(s) of the priority-claiming application before the priority-claiming application was filed.

Issues with Joint Applicants

When a priority application lists multiple parties as applicants (e.g., A and B), in the absence of any assignment of the right to claim priority to another party, both A and B must be listed as applicants on the priority-claiming application (see T382/07).

Furthermore, if A assigns the right to claim priority to C, and B assigns the right to claim priority to D, then both C and D must be indicated as the applicants on the priority-claiming application.

Issues with Employment Contracts

In the US, a priority application (e.g., a US provisional application) often lists the inventors as the applicants, whereas the priority-claiming PCT application lists the inventors’ employer as the applicant.  In such a situation, it is necessary to demonstrate that the right to claim priority was, prior to filing the PCT application, assigned to the employer.  The best way to demonstrate this is via a signed and dated assignment document; however, if such a document does not exist, the employment contract may be able to rescue the situation. In particular, if the employment contract states that the employee “hereby assigns all rights” relating to any invention made under the terms of their employment, it should be possible to successfully argue that the right to claim priority was assigned.  Importantly, if the employment contract states that the employee “hereby agrees to assign all rights” relating to any invention, this is generally not considered to be sufficient to demonstrate that the rights have actually been assigned.

Of course, if the applicant(s) of the priority patent application (e.g., the inventor(s)) have signed an employment contract in which they “hereby assign all rights” to their employer, then the right to claim priority has passed to the employer, and the employer needs to be indicated as the applicant on the priority claiming application. Accordingly, there may be situations where the inventors are indicated as the applicants on the priority application and on the priority-claiming application, but, because of the employment contract, the right to claim priority did not belong to the inventors at the time the priority-claiming application was filed. This can result in the priority claim being lost.

Issues with PCT Applicants in Respect of the US Only

In some situations, a priority patent application (e.g., a US provisional application) will list the inventors as the applicants, whereas the priority-claiming PCT application lists the inventors as applicants in respect of the US only, and the employer as the applicant in respect of all other states.  In the absence of the priority claim being assigned from the inventors to the applicant prior to the PCT filing date, will the indication of the inventors being applicants in respect of the US only be sufficient to establish that priority has been correctly claimed? This matter is currently being considered by the EPO Board of Appeal in two cases (T2749/18 and T1837/19), but a decision is not expected for a while.

Is Entitlement Relevant?

The question of who is entitled to the invention is irrelevant when determining who has the right to claim priority (see T 5/05).  The right to claim priority belongs to the party or parties indicated as the applicant(s) on the priority application, irrespective of whether they are entitled to the invention or not.

  What to do

When filing a priority-claiming application it is necessary to determine who has the right to claim priority.  In the absence of any assignment (either an actual assignment or via the employment contract) the right will belong to the party or parties indicated as the applicant(s) on the priority application. The party or parties indicated as the applicant(s) on the priority application should therefore be indicated as the applicant(s) on the priority-claiming application.

When there is a clear assignment of the right to claim priority from the party or parties indicated as the applicant(s) on the priority application to another entity, that entity should be indicated as the applicant on the priority-claiming application.

When it is not clear whether the right to claim priority from the party or parties indicated as the applicant(s) on the priority application has passed to another entity, it is generally recommended to file the priority-claiming application listing the party or parties indicated as the applicant(s) on the priority application and the entity to which the right may have been transferred. Any necessary changes to the applicants to correctly reflect the ownership can be made subsequently, but on filing the priority-claiming application it is essential that all parties that have, or may have, the right to claim priority are listed as applicants.

Adrian Tombling Life Sciences & Chemistry group

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP March 2021

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Joint applicants and the right to claim patent priority in the eu.

Establishing valid priority claims can be challenging for co-applicants in Europe, as Stéphanie Landais-Patarin explains.

As we covered previously , the issue of the right to claim priority has been referred again to the Enlarged Board of Appeal, specifically regarding European regional phase applications derived from Patent Cooperation Treaty (PCT) applications. A PCT application had been filed with A as the applicant for the US and with B as the applicant for other countries (notably Europe), but claiming the priority of a US patent application filed by A.

In the absence of an assignment of the priority right from A to B, the priority was not deemed to be validly claimed and the European patent (EP) was revoked based on documents published after the filing date of the priority US patent application.

Co-applicants and European patents

On appeal, the patent owner relied on the ‘co-applicant approach’ followed by the EPO, which states that in the case of an EP application filed by co-applicants, it is sufficient for at least one of the co-applicants to have filed the priority application for the subsequent EP application to benefit from the priority date as the filing date. The patent owner argued that this approach was valid because a PCT application should have the same effect as an EP application, and in the case of an EP application, different applicants in different member states are co-applicants.

For its decision, the Board of Appeal decided to follow an alternative approach, according to which the applicable law is the law of the jurisdiction in which protection is sought, i.e., the European Patent Convention (EPC), which does not impose any formality as regards the assignment of the right of priority. Thus, the filing of the PCT application would be the very evidence that the right of priority was ‘implicitly’ assigned to other countries, since A consented to B being an applicant for countries other than the US.

The following questions were put to the Enlarged Board of Appeal, therefore:

• Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title under Article 87(1)(b) EPC?

It should be noted that this is not the first time that this question of jurisdiction has been raised, and that it is still to be decided.

• If the answer to Question I is in the affirmative: Can a party B validly rely on the priority right claimed in a PCT application for the purpose of claiming priority rights under Article 87(1) EPC where:

1) a PCT application designates party A as the applicant for the US only and party B as the applicant for other designated states, including regional EP protection, and

2) the PCT application claims the priority of an earlier patent application which names party A as applicant and

3) the priority claimed in the PCT application complies with Article 4 of the Paris Convention?

Patent applicants facing these priority problems are eagerly awaiting the decision of the Enlarged Board of Appeal. In the meantime, the  ‘co-applicant approach’ practised in the context of PCT applications should a priori be favoured.

Please get in touch with one of our European patent attorneys for further guidance or support, or contact us below.

Stéphanie Landais-Patarin is a Patent Attorney at Novagraaf in Paris. 

Contact us for more information or support

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From national to international: how to exploit the right to patent priority.

After filing a national patent application, it may be desirable to seek protection for the invention that forms the focus of the application in other territories by utilising the right of priority. Marie Houppe and Kate McNamara set out the options.  

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On-demand insights, when obtaining a patent assignment just isn’t enough.

By Peter Gordon, • February 11, 2019

Many university technology managers are familiar with the following scenario: an invention disclosure is received, often at the last minute before a publication; a provisional patent application is filed; a full application is later drafted and filed as a PCT application; and finally, national phase applications are filed, at least in the U.S. and perhaps other countries. At some point along this process, and often after the U.S. national phase applications are filed, the inventors’ declarations and assignments are executed.

Technology managers understand the importance of actually obtaining an executed assignment, due to the U.S. Supreme Court’s decision several years ago in Stanford v. Roche . They also are well aware of the obvious problem with waiting to obtain an assignment: an inventor may refuse to sign or could leave their position before being asked to signed documents. However, technology managers also need to pay attention to other esoteric aspects of patent law, including claiming “rights of priority,” identifying the “applicant,” and timing of execution of assignments. Failure to pay attention to these finer points could potentially result in a loss of, or an increased cost for retaining, rights outside the U.S.

For example, when a provisional patent application is filed, the named applicant is the entity which owns the right to claim priority to the provisional.  A later PCT applicant must own this right for it to be validly claimed.  If the applicant for the provisional application is the inventor, and the applicant for the PCT application is the university, then a claim of priority to the provisional application might not be valid. If the PCT application is not entitled to the priority claim, then intervening prior art, such as the inventor’s own publication, could result in lack of novelty of non-U.S. national phase applications based on that PCT application. Obtaining an assignment prior to filing the PCT application, or naming the university as the applicant on the provisional application, may resolve the problem.

To better protect the university’s IP rights outside the U.S., we recommend the following:

• Ensure an Application Data Sheet is filed in a U.S provisional patent application.

In the U.S., an Application Data Sheet (“ADS”) is a form that allows someone other than the inventor to be designated as the “Applicant” of a U.S. patent application.  More precisely, the ADS is the only way to designate an entity, other than the inventor, as the Applicant of a U.S. patent application. You might ask, why isn’t an ADS always filed in a provisional application as a matter of course? Quite simply, it is not required and, therefore, often skipped. Also, for an entity to be an Applicant, there must be an assignment, or an obligation to assign, to that entity – making filing of the ADS a good opportunity to check those assignment obligations! The ADS should be filed at the time of filing a provisional application, although it can be filed later with a little extra paperwork (if diligence cannot be timely completed to confirm that all inventors have an obligation to assign).

• Ensure that the applicant owns the right to claim priority at the time of filing a later application

To establish the right, in a later application, to claim priority to a prior application, one must either:

• Match the name of the Applicant on the later application to the name of the Applicant on the prior application. For example, by filing an ADS in a provisional application specifying an Applicant, this same Applicant can be named as the applicant on a PCT application. Or, if no ADS was filed in the provisional, then the PCT Request should name the inventors as the Applicant on the PCT application.
• prior to filing the later application, ensure that there is an assignment of the prior application to the new Applicant and that the assignment assigns the right of priority. Here, it is important to ensure that the assignment document specifically mentions the right of priority. It is also a good idea to consider inventorship, ownership, and applicant status of any new matter introduced in the later application. [1]
• Set expectations about executing legal documents early in the process.

Simply recommending that inventors sign documents early in the patent process, preferably at the time of filing, doesn’t help in situations where applications are filed at the last minute or when e-mails and phone calls are ignored. A more practical recommendation for addressing this problem is to start by setting expectations.  Let inventors know, at the beginning of the process, that legal documents will be signed as part of completing the application for filing. Instruct prosecution counsel to file each patent application with signatures from the inventors, to discuss this expectation with the inventors, and communicate promptly about any problems. By setting such expectations early in the process, you are more likely to obtain those signatures, or otherwise identify earlier if there will be a problem in obtaining signatures. Even if a provisional is filed without an ADS or executed assignment, taking longer than three months after filing to submit these documents should raise a flag.

• Customize your docketing system to include earlier dates for executing documents and verifying applicant status.

Docketing systems generally docket only required dates by default. Since the above- recommended actions are not required , it is important to customize the docketing system and otherwise create and implement a process around them.  For example, docket an action of “Verify ADS filed” within three (3) months of filing a provisional application.

We routinely work with TTOs to help improve internal processes to avoid issues like those described above.  We advise our TTO clients to consider incorporating such recommendations into their day-to-day internal processes, such as by clearly defining responsibilities of the inventors, outside counsel, and the technology transfer office, using checklists and the docketing system to implement processes, and conducting periodic portfolio reviews to detect potential issues and ensure compliance.

If you have questions about internal processes for managing patent filings, our team would be happy to help. Feel free to contact Peter Gordon directly at [email protected] or to request more information by visiting our Contact Us page.

[1] For some countries, an assignment also needs to be signed by the assignee, to indicate “acceptance”. Having the applicant defined as the university at the outset may reduce the impact of this issue.

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Guidelines for Transferring Priority Rights

Michael Caine , a Principal of Davies Collison Cave Pty Ltd, is the current chair of Group 3 (International Patents) Study & Work Commission (CET) of the International Federation of Intellectual Property Attorneys (FICPI). In that role Michael carried out a study to identify the various national requirements for the effective transfer of priority rights in accordance with Article 4A(1) of the Paris Convention, under which an applicant filing an application for an IP right in one country can claim the right of priority from that application in another country. The study focused on the manner in which various countries and regions have implemented the provisions of Article 4A(1), and where this implementation differs from the specific provisions of the Paris Convention. The information gathered was analysed and a set of guidelines prepared to assist applicants and attorneys in taking the steps necessary to ensure that priority rights are transferred in a manner which will be effective in all or most Paris Convention countries.

To initiate the study a questionnaire was prepared providing background information in relation to the operation and effect of the provisions of Article 4A(1) of the Paris Convention (PC) and setting out 16 questions framed to obtain information about requirements and procedures for transferring priority rights in accordance with these provisions.

The questionnaire was primarily concerned with the filing of a patent application (the “Later application”) claiming priority from an original priority setting application (the “Priority application”) made in an originating country that is a signatory to the Paris Convention, in circumstances where the applicant of the Later application is different from the applicant of the Priority application. For the priority claim made in the Later application to be effective it is important to ensure that the priority rights are transferred to the applicant of the Later application by the applicant of the Priority application. The questionnaire examined several issues associated with the effective transfer of priority rights, including:

i)     The general requirements for transferring a priority right from the applicant of the Priority application to another party;

ii)    Whether an applicant who has no rights in the Priority application can be included in a Later application claiming priority from the Priority application;

iii)   Whether the right to claim priority can be treated separately from rights in the invention and rights to the Priority application;

iv)   What rights are needed at the time of filing a Later application, and for obtaining a patent with a valid priority claim in respect of that application;

v)    Whether, in the case of a Priority application with multiple applicants, each applicant has an individual priority right or the priority right is owned jointly by all applicants, and the circumstances under which the priority right (or the portions belonging to respective co-applicants) can be assigned to a third party;

vi)   Whether employment contracts are effective in transferring priority rights in the case of a single applicant, and in the case of multiple applicants with potentially different employment contracts;

vii)  The law that is applicable to the determination of the effectiveness of a priority right transfer, particularly when the invention is made and/or the transfer occurs over multiple countries; and

viii)  In the case where a single application is filed for multiple inventions, the circumstances under which the priority right can be separated between the inventions and the inventors of each respective invention.

The questionnaire also examined whether there are differences in the requirements for the transfer of priority rights for national phase applications made under the Patent Co-operation Treaty (a PCT application).

While the full Report of the study is available < here >, the results can be summarized as follows.

It appears that the right to claim priority from an earlier filed Priority application is not limited to the applicant of the Priority application, and may be held by the assignee of the Priority application, or the assignee of the right to claim priority.

In general, the mere consent of the applicant of the Priority application is not sufficient to enable a person who is not the assignee of the Priority application, or of the associated right to priority, to obtain the priority right.  It appears that a contribution of patentable subject matter to the Later application will, in most countries, enable an applicant of this Later application to obtain the right to claim priority from a Priority application in circumstances where the person does not otherwise possess rights in the Priority application itself.  The act of making the application jointly with the owner of the priority rights can imply assignment of those rights to the extent that such assignment may be necessary.  However, such a priority claim will only be valid in respect of subject matter that is disclosed in both the Priority and Later applications.

Many countries recognize a practical separation between the right to claim priority from a Priority application, rights in the Priority application, and rights to the invention the subject of the Priority application, even in the absence of any specific legislative provisions or case law to support the independence of these rights.  Countries where these rights appear to be inseparable include the United States, Canada, Peru and Singapore.

Although rights in the invention appear to be generally required for a person to obtain the grant of a valid patent, in many countries these rights are not required to file the Later application.  In such countries, the retroactive acquisition of the rights in the invention after filing the Later application, and before the grant of a patent on this application, generally allows a valid patent to be obtained.  Exceptions include the United Kingdom, and the United States and Canada where rights to the invention are required to file the Later application.  However, some other countries do not permit rights in the invention to be obtained at a time after filing the Later application for the grant of a patent with a valid priority claim.

It appears that the right to claim priority must be possessed by the applicant of the Later application at the time of filing in order to enable the grant of a patent with a valid priority claim.  The priority right cannot typically be acquired retroactively to allow a valid patent to be granted in respect of a Later application with its priority claim intact.

Generally, where there are multiple applicants of a Priority application the priority right must be exercised by the co-applicants jointly.  A minority of countries, including Brazil, China, New Zealand, Peru, Singapore and the United States, permit individual co-applicants to claim priority independently.  The transfer of a co-applicant’s ‘share’ of the joint priority right to a third party typically requires, at least, the consent of all other co-applicants, and in some countries is not possible even when such consent is available.

Provisions included within employment contracts are generally effective in transferring priority rights in an application filed by, or on behalf of, a single employee, provided that the application relates to an invention made in the course of, or as a consequence of, the employee’s employment.  However, in some countries the priority rights must be separately assigned to the employer by the employee filing the Priority application.  Additionally, when the Priority application has multiple applicants the effectiveness of the employment contract provisions for transferring priority rights varies based on jurisdiction.

When determining whether a transfer of priority rights involving multiple jurisdictions is effective, most countries prioritize the law of the country where the assignment was executed, or the law of the country that is specified in the assignment.  Due to the absence of any international legal authority or substantial consensus regarding this issue, applicants anticipating the possibility of a priority rights transfer across multiple jurisdictions should proceed cautiously.

Finally, it appears that separate Later applications can generally be filed for each invention disclosed within a single Priority application.  Although the priority right can be split between the different inventions in many jurisdictions, some notable exceptions include Argentina, Australia, Brazil, China, Greece, Romania and the United States where the priority right is coupled to the application.

The Guidelines for Transferring Priority Rights prepared on behalf of FICPI can be found here . Daniel Pullella assisted Michael in preparing the Guidelines and the Report. If you have any questions about the Guidelines or the Report, please do not hesitate to contact Michael Caine [email protected]

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4.1 Formal requirements

4.1.8 claiming priority .

4.1.017 If you or your predecessor in title have duly filed an application for a patent, a utility model or a utility certificate in or for any state party to the Paris Convention for the Protection of Industrial Property or any member of the World Trade Organization you may claim priority when filing a European patent application in respect of the same invention. You must file the European patent application no later than twelve months after filing the first application (see points 5.10.008 - 5.10.010 ).

Art. 87 GL A‑III, 6 GL F‑VI, 1.3

If the earlier application was filed in or for an EPC contracting state, you may also designate that state in the subsequent European application. The earlier application whose priority you claim may also be a European or an international (PCT) application (see point 2.4.010 ).

4.1.018 You may claim multiple priorities in respect of one European patent application, even if they originate from different countries. You may also claim multiple priorities for any one claim. If you claim multiple priorities, time limits which run from the date of priority are computed from the earliest priority date. 

Art. 88(2) , (3) GL F‑VI, 1.5 GL A‑III, 6.3

4.1.019 To claim the priority of an earlier application you must indicate the date, country and file number of the earlier application. 

Art. 88(1) R. 52 , 53 GL A‑III, 6.5 , 6.7 GL F‑VI, 3.1 - 3.3

You must also file the priority document, i.e. a copy of the earlier application certified by the authority with which it was filed, together with authentication of its filing date from that authority, within 16 months of the priority date. In certain cases you are exempted from having to submit a priority document: currently the EPO includes a copy of the earlier application whose priority you claim in the file of the European patent application free of charge if the earlier application is a European patent application or an international patent application filed with the EPO as receiving Office. 

It is also possible for you to request that the EPO retrieve the priority document electronically via the WIPO Digital Access Service (DAS), provided that the office where the first filing was made participates in this service. To enable you to make use of DAS, the Office of First Filling will generate a dedicated access code, which you will need to provide to the EPO together with your retrieval request. You can file the retrieval request directly in the request for grant of a European patent (EPO Form 1001; see point 4.1.013 ) or by filing EPO Form 1013, available on the EPO website ( epo.org ). In response, the EPO will automatically retrieve, free of charge, the priority document issued by the Office of First Filing. For more information please consult the WIPO website ( wipo.int ).

OJ EPO 2021, A83 OJ EPO 2019, A27

If you are filing a European patent application claiming priority from an earlier application, you have to file a copy of any search results in respect of the earlier application. Where the search results are not available when filing the European patent application, they have to be filed without delay after they have been made available to you. The obligation to file the search results for the earlier application exists as long as the application is pending before the EPO. Where the EPO notes, at the time when the examining division assumes responsibility, that the search results have still not been filed, it invites you to file them within a non-extendable time limit of two months. If you fail to file the search results or a declaration that they are not available to you, the European patent application will be deemed to be withdrawn. 

Art. 124 R. 141 , R. 70b GL A‑III, 6.12

You are exempted from the obligation to file a copy of the search results if the EPO drew up the search report or your priority application was filed in Austria, China, Denmark, Japan, the Republic of Korea, Spain, Sweden, Switzerland, the UK or the US. In future, further countries are expected to be included in this list. 

4.1.020 You should preferably submit the declaration of priority indicating the date, country and file number of the earlier application when you file your European patent application .

R. 41(2)(g) , R. 52(1) GL A‑III, 6.5 , 6.7 GL F‑VI, 3.2

You must supply the complete declaration of priority and the priority document no later than sixteen months after the earliest priority date.

R. 52(2) R. 53(1)

If you do not indicate the file number or file the copy of the earlier application within the above time limit, you will be invited to remedy the deficiency; if you fail to do so, you will lose your right to priority (but see point 5.2.006 ).

R. 59 GL A‑III, 6.7 , 6.10 , 6.11

4.1.021 Among the effects of a valid claim to priority is that the date of priority determines the prior art that can be cited against the European patent application. 

Art. 54(2) , (3) Art. 60(2) ,  Art.  89

As a rule, the EPO initially examines only the formal conditions for claiming priority. The examining division (see points 5.4.001 et seq.) normally checks whether a right to priority exists if it finds prior art (see point 3.3.001 ) from between the priority date and the date of filing of the European patent application or if it finds a prior right under Article 54(3) (see point 3.3.003 ). The subject-matter for which priority is claimed must be derivable directly and unambiguously from the full disclosure of the invention in the priority document.

GL F‑VI, 2.1 , 2.4

Where the priority document is not in English, French or German, you may be invited to file a translation of the previous application into one of the EPO's official languages. If you receive such an invitation, which may happen throughout the grant or opposition proceedings, you must file the translation within the period set by the EPO. Alternatively, if the European patent application is a complete translation of the previous application, you may submit a declaration to that effect. If you fail to supply the translation of the priority document or the declaration in due time, the right to priority with respect to the priority claim in question will be lost. However, during grant proceedings, you may file a request for further processing if you have failed to file the translation in time. 

R. 53(3) Art. 121 R. 135 GL A‑III, 6.8 GL F‑VI, 3.4

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The Errors in the Assignment of the Right of Priority, or How to Lose a European Patent

The filing of a patent application gives rise to two different rights, namely the right derived from the application in question (ownership), and the right of priority, i.e. the right to claim the priority of a first application in a second patent application that must be filed within a certain period of time, which in the case of patents is of 12 months.

For priority to be valid, essentially two conditions must be met: the second patent application must relate to the same invention and the applicant must either be the same or have acquired the right of priority. Although the second condition (same applicant or applicant entitled to priority) seems an easy formality to fulfil, it actually has its difficulties and requires special attention from applicants.

It is common for the ownership of the first application to be transferred before the second application has been filed. By way of example, it is relatively common, particularly in applications filed in the USA, for the applicants (owners) of the first application to include the inventors and for them to assign ownership to a third party, such as a company, organisation or university. However, the transfer of ownership does not automatically imply a transfer of the right of priority. In particular, the European Patent Office (EPO) applies very strict rules to determine whether, at the time of filing the second application, the applicant is the same or has acquired the right of priority.

For the priority to be valid, the applicant on the filing date of the patent application must be the same as that of the priority application. If it is not, the subsequent applicant must have acquired, on the same date, the right of priority through an assignment agreement with the original applicant.

The assignment of priority must be made in the proper form, which means that it must be made by each and every original applicant and as clearly as possible, ideally by means of a written contract. And not all the evidence that is submitted to prove the assignment of the right of priority will serve the purpose.

In the EPO practice, if not all applicants for the first application are applicants for the second application, and if the former ones do not expressly assign the right of priority to the latter when and as they should, the priority is not valid and this can lead to the loss of the European patent because the defect in the right of priority cannot be remedied. Moreover, the right of priority cannot be assigned a posteriori or retroactively.

This was the case of European patent application No. EP13818570, European national phase of an international PCT application, concerning CRISPR-Cas9 technology in the name of several applicants (The Broad Institute, MIT, Harvard College) , which was refused by the EPO due to lack of novelty, motivated in turn by the loss of the right of priority because it had not been assigned at the right time.

This European patent application claimed the priority of a number of provisional applications filed in the United States in the name of several applicants, including the inventors.

In this regard, we recall that the filing date of a European patent application as a national phase of a PCT international application is the filing date of the PCT. Thus, if the PCT international application validly claims a priority, then the effective date of the European patent application, for the purposes of determining its novelty and inventive step, is the priority date. But if the priority is not valid, the effective date is the filing date of the PCT international application.

In the case of the CRISPR-Cas9 patent application, not all the applicants of the provisional applications filed in the United States, which included the inventors, were among the applicants of the PCT international application (The Broad Institute, MIT, Harvard College). In this case, the absent applicants should have assigned to the latter, at the time the PCT international application was filed, not only their right of ownership but also their right of priority, which they did not do.

Since there was no assignment of the right of priority by the absent applicants in the second application, the EPO considered that the priority claim was invalid. Therefore, the EPO considered as the effective date of the European patent application to be the filing date of the PCT application and not the priority date.

The tragedy of the situation is that between the (invalid) priority date and the filing date of the PCT application, the inventors had disclosed the invention, so the EPO revoked the European patent for lack of novelty.

The case had a particular resonance because it concerned a patent on a technology with great economic relevance, related to a molecular tool that allows editing or correcting the genome of a cell and which led to the award of a Nobel prize (granted, by the way, to a different research team from those who lost this European patent due to a defect in priority).

The relevant decision (decision T 0844/18), dated 16 January 2020, can be found in the following link:

https://www.epo.org/law-practice/case-law-appeals/pdf/t180844eu1.pdf

Another similar case is that of European patent application No. EP09719907 , also a national phase of an international PCT application, on behalf of the Canadian university “The University of Western Ontario” , whose main claim was refused by the EPO for lack of inventive step, due to the fact that priority was lost because it was not assigned in the correct form.

That application claimed the priority of two US provisional applications, filed in the name of three inventors.

During its processing, the EPO requested proof of the assignment of the inventors’ right of priority to the university, and the university submitted only the application documents filed in the US, which included a box relating to “Assignee information”, where the university in question was listed.

The EPO pointed out that this brief information did not demonstrate an assignment of the inventors’ right of priority in favour of the university at the time the PCT was filed. In any event, according to the EPO’s criteria, this document indicated an assignment of ownership, but not an assignment of the right of priority, which are different things. Indeed, an original applicant automatically owns both rights (ownership and priority), but an assignment of ownership does not automatically imply an assignment of the right of priority.

In rejecting the priority claim, the EPO therefore considered that the effective date of the European patent application was the filing date of the PCT international application and not the priority date.

With the misfortune that between the (invalid) priority date and the filing date of the PCT international application, a document was published which, due to the loss of priority, became part of the prior art. This caused the EPO to reject the main claim of the European patent application for lack of inventive step in respect of this document.

Here is the relevant decision (decision T 0407/15) of 27 October 2020:

https://www.epo.org/law-practice/case-law-appeals/pdf/t150407eu1.pdf

These cases prove that the correct assignment of the right of priority of a patent is of crucial importance for the prosecution of a European patent application.

Failure to assign the right of priority at the proper time and in the proper manner is an error that cannot be remedied which, together with the disclosure of certain information between what should have been the priority date and the actual filing date, results in the loss of the patent.

Utmost care is a priority when we talk about the right of priority.

By María Ceballos (IP Attorney and Lawyer), Isabela Robledo McClymont (Lawyer) and Robert Roser (IP Attorney and European Patent Attorney) at CURELL SUÑOL SLP

Brief Introduction Of The Patent Priority System

Contributor

Speaking of "priority right", patent applicants must be very familiar with this term. Every applicant would concern whether they could enjoy the right of priority, and every patent agency would remind their clients to be mindful about whether there is any priority they should claim before filing a new patent application.

Do you truly understand the concept of "priority right"? Here we will have a detailed introduction to priority right, in hope that you will have better understanding on this important system.

Origin of the patent-priority system

The patent-priority system was first established in the Paris Convention for the Protection of Industrial Property of 1883, aiming to help an applicant file a subsequent application in another contracting state after filing a first application in his own state. More specifically, the priority right means that after an applicant first files a patent application in one contracting state, he could, within a limited period, file a subsequent application to seek protection for the same subject matter in another contracting state, and the subsequent application, in some respects, is considered as filed on the date of filing the first application. Any disclosure or application made between the period from the filing date of the first application to the date of filing the subsequent application will not affect the novelty or inventive step of the subsequent application. That is to say, the applicant's subsequent application enjoys a priority (i.e. the commonly-called foreign priority) compared with others when filing the same subject once the applicant filed an application first and he gains an advantage in the following filing and examination procedures If the subsequent application could claim and enjoy the priority. This system provides protection for the rights of both inventors and applicants.

With the development of patent system, the preferential treatment provided by the priority system is no longer limited to foreign applicants, but is also extended to domestic applicants. That is to say, after first filing an application in his own country, if within a limited period, he files a subsequent application for the same subject matter in his country, he can also enjoy the priority of the first application (i.e. the commonly-called domestic priority).

It should be noted that the priority period is different for different types of applications, i.e., 12 months for patents and utility models and 6 months for industrial designs, staring from the date of filing the first application. The applicant can no longer enjoy this right beyond the prescribed period, even if the application meets the "substantive" requirement of claiming priority. It is a restriction on the right holder for the purpose of fairness and justice.

For a prior application to be qualified as a priority, being filed earlier is insufficient, it also should be the first application, otherwise, it cannot serve as a basis for claiming a priority. This is to prevent the applicant from using the priority system to indefinitely defer the filing date. The first application means that no same application had been filed prior to it and that it has not claimed any priority. However, the so-called first application is also not absolute, and in accordance with Article 4(4) of the Paris Convention, "A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority.".

As far as foreign priority is concerned, the prior application which serve as the basis for claiming a priority and the subsequent application which claims a priority are independent of each other. According to provisions in the Paris Convention, the withdrawal, abandonment or rejection of the "prior application" does not affect the application's ability of serving as the basis for claiming a priority.

Brief introduction

The basic concept of priority has been introduced above. It can be seen that the purpose of patent priority is to give the same applicant a security period for filing a patent application on the same subject in different countries, excluding the possibility for plagiarists to file a preemptive application and obtain a patent.

So what kind of procedures do you need to go through to claim a priority?

Foreign Priority

According to the provisions of China's Patent Law and Implementing Regulations of The Patent Law , foreign priority means that where, within twelve months from the date on which any applicant first filed in a foreign country an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, the applicant files in China an application for a patent for the same subject matter, the applicant may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both countries are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority.

To enjoy a foreign priority, the applicant needs to be mindful about the following details:

First, a declaration of priority shall be submitted.

Any applicant who claims the right of foreign priority shall make a written declaration when an application is filed, and if the applicant fails to make the written declaration, the claim to the right of priority would be deemed not to have been made. Submitting the declaration of priority is the first step for claiming a priority, and if this declaration fails to be submitted at the time of filing, it can no longer be filed later. Thus, it is very important not to neglect this.

The so-called declaration is to fill in the information of the prior application in the corresponding column of the application form of the subsequent application, including: the filing date and application number of the prior application, the name of the authority with which the prior application was filed; If in the declaration, one or two of these three items are missing or incorrect, the applicant shall make rectification within a prescribed time limit, otherwise, the right of priority will be deemed not to have been claimed. Therefore, applicants shall pay attention to this step.

Secondly, a copy of the prior application documents shall be submitted.

Where an applicant claims the right of foreign priority, the applicant shall submit a copy of the prior application documents. This copy shall be certified by the authority with which the prior application was filed. The formality of the copy of the prior application document shall comply with the international practice. At least, the name of the country or governmental organization with which the prior application was filed, the name of the applicant, the filing date and the application number shall be indicated. It should be noted that the copy of the prior application documents shall be submitted within three months from the date of filing the subsequent application. In comparison to the time that authorities issue and deliver documents, this time period is relatively sufficient.

In order to expedite the examination process and improve the examination efficiency, a copy of the relevant certified documents may be prepared in advance and submitted together at the time of filing the subsequent application if the applicant intends to claim the priority of a prior application. Of course, for the convenience of applicants from various countries, the copies of certified priority documents can be submitted in several ways, including DAS transmission, direct transmission, authorized transmission and so on, to reduce the pressure on applicants.

Thirdly, the applicant of the subsequent application shall be the same as the applicant of the prior application.

The applicant of the subsequent application which claims the right of priority shall be the same as the one recorded in the copy of the prior application. If not the same, a document certifying the assignment of the right of priority, signed or sealed by all of the applicants of the prior application, shall be submitted at the time of or at the latest within three months from the date of filing the subsequent application. Where the prior application has several applicants and the subsequent application has several different applicants, a document certifying the assignment of the priority right, signed or sealed by all of the applicants of the prior application, to all of the applicants of the subsequent application may be submitted; or a document certifying the assignment of the priority right, signed or sealed respectively by all of the applicants of the prior application, to the applicants of the subsequent application shall be submitted. The document certifying the assignment of the priority right shall be signed before the filing of the subsequent application, unless otherwise stipulated in such document.

If the applicants of the subsequent application are included in the applicants of the prior application, there is no need to provide a document certifying the assignment of the right of priority. Meantime, the right of claiming a priority can be assigned independently of other civil rights.

Furthermore, fees for claiming priority shall be paid.

Where an applicant claims priority, the applicant shall pay the fee for claiming priority at the same time with the payment of the filing fee. If the fee is not paid or not paid in full within the time limit, the claim for priority shall be deemed not to have been made. Where the claim for priority has been withdrawn, the fee paid for claiming priority will not be refunded.

The above four steps are key formality requirements for claiming a priority. Thus, the applicant must submit all documents in a timely manner so as to enjoy the right of priority.

Then, if do not want to submit the priority documents and want to abandon the priority claim, what should we do?

The applicant may withdraw his claim to the right of priority after claiming the priority. Where multiple priorities are claimed, the applicant may withdraw his claim to one or some or all of the rights of priority. Where any applicant withdraws his claim to the right of priority, he shall submit a written declaration of withdrawal of the right of priority.

The above is an introduction to foreign priority. In contrast to foreign priority, domestic priority is relatively simpler.

Domestic Priority

Domestic priority means that where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, the applicant files with the patent administration department under the State Council an application for a patent for the same subject matter, the applicant may enjoy a right of priority.

With regard to copy of priority documents, since the prior application was also filed with the China National Intellectual Property Authority (CNIPA), where a domestic priority is claimed, the applicant does not need to submit a copy of priority document. As long as the filing date and application number are indicated in the application form, a copy of priority document may be deemed to have been submitted.

In addition, the same as the requirement of foreign priority, domestic priority also requires that the prior application shall be the first application. Therefore, if the prior application has already claimed a foreign or domestic priority, or is a divisional application filed as prescribed, the prior application shall not serve as the basis for claiming priority.

Further, where a domestic priority is claimed, since the prior application and the subsequent application are both filed with the CNIPA, and both applications are for the same subject matter, the issue of double patenting may be raised. To avoid double patenting, it is prescribed in the Implementing Regulations of The Patent Law that, where the prior application has been granted, it cannot serve as the basis for claiming domestic priority, and where the domestic priority is claimed, the prior application shall be deemed to be withdrawn from the date on which the subsequent application is filed.

An applicant may claim one or more priorities for a patent application; where multiple priorities are claimed, the priority period for the application shall be calculated from the earliest priority date.

Regarding patent priority, we should also be aware of the details below:

(1) There is strict time limit for claiming the right of priority. Only the right of priority is claimed with the prescribed priority period, can the applicant enjoy the right of priority.

(2) The right of priority is not established automatically. The applicant must submit a declaration of claiming priority at the time of filing the subsequent application and submit all corresponding effective evidence documents, and only after these documents are considered qualified upon examination, will the right of priority be established.

(3) The subsequent application which claims a priority shall have the same subject matter as the prior application. The term "same" means that all the contents of the claims of the subsequent application can be found in the whole text of the prior application. Therefore, the description of the subsequent application may be improved on the basis of that of the prior application.

The starting point for calculation of priority period, i.e. the determination on the scope of prior arts, plays a very important role for a patent application. Hope the above basis knowledge about priority right may be of help for you to understand China's priority system for patent applications.

The Chinese version of the article has been published on AFD China's official WeChat account. https://mp.weixin.qq.com/s/7ALlwSGmvBZIXas49v18UQ

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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