pitfalls of priority
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Artist Bjørn Bjørnholt
Pitfalls of priority
October 2011
Peter Sørensen M.Sc. Physics and Chemistry European Patent Attorney Team Leader T +45 87 32 18 04 E psn@pv.eu
Priority
12 months, same invention, same applicant etc.
12 months
time
1 October 2010 1 October 2011
Priority
Priority is an apparently simple and practical tool - but beware of the mistakes you can make!
- or your opponent…!
Priority Legal basis – European/Danish perspective
Paris Convention
Art 4 Paris Conv.
Patent Cooperation Treaty (PCT) Art. 4 & 8 PCT
European Patent Convention (EPC)
Art. 87-89 EPC (PCT prevails over EPC; Art 150(2) EPC)
National law and case law
DKPL §6 Laws regulating transfer and ownership to inventions
Legal basis is complex
Paris convention
PCT EPC
EPC
DK NO
DE UK …..
DK NO
DE UK …..
US JP CN
…..
DK NO
DE UK …..
US
JP CN
Legal basis Priority - EP
Art 87 (1) EPC; 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.
- modelled over Paris Convention Art. 4A (1) & 4C(1)
Priority Pitfall #1
Any person….or his successor in title,…
EPO has strict interpretation; e.g. daugther company and mother company – no priority!
right to priority must be assigned from A to B before claiming priority
12 months time
1 October 2010 1 October 2011
Applicant: A Applicant: B
Priority Pitfall #1
Any person….or his successor in title,…
Priority right belongs simultaneously and jointly to co-applicants (T 788/05, UK High Court; Edwards Lifescience vs. Cook):
right to priority must be assigned from A+B to A before claiming priority
12 months time
1 October 2010 1 October 2011
Applicants: A + B Applicant: A
Priority Pitfall #2
Any person….or his successor in title,… Assignments not signed when priority is later claimed; UK & FR recent case law shows priority may be invalid! (EPI –journal, 2010, 1, p. 19-24)
12 months time
1 October 2010 1 October 2011
Applicant: A Applicant: A
Inventor: X
Priority Pitfall #2
Any person….or his successor in title,… Assignments must be signed before priority is claimed.
Priority Pitfall #3
…in respect of the same invention….
G 2/98:
The requirement for claiming priority of ”the same invention”, referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.
Priority Pitfall #3
…in respect of the same invention….
12 months
time
1 Oct. 2010 1 Oct. 2011
A+B Claim 1: A+B Claim 2: A+B+C
PUB: A+B
Priority Pitfall #3
…in respect of the same invention….
Practical advice:
make sure your priority is preserved when updating the later application (e.g. PCT); for example keep identical wording of claims from the priority application in an annex.
Priority Pitfall #3
…in respect of the same invention….
New priority year is started for A+B+C !
12 months
time
1 Oct. 2010 1 Oct. 2011
A+B Claim 1: A+B Claim 2: A+B+C
1 Oct. 2012
12 months
Priority Pitfall #3
…in respect of the same invention….
Strict interpretation of ‘same invention’ may actually be an advantage for applicants with several applications on similar subject matter
avoids so-called self-collision !
12 months
A+B A+B
12 months
A+B+C A+B+C
> 12M
Priority lost if A+B = A+B+C
Priority Pitfall #3 – ‘photographic approach’ for same invention related to DNA sequence
- T923/92 sequence deviation in coding region. Patentee: No substantial effect. Board: Similar does not mean idential, thus priority lost.
- T351/01 sequence deviation outside coding region. Board: No destinction between technical feature/effect of the invention and those which are not, thus priority lost.
- T1213/05 (‘BRCA1’) sequence deviation (15/5600 nt). Patentee: No bearing on the application of the sequence. Board: Margin of error open for interpretation leading to ambiguity and vagueness, thus priority lost.
- T250/05 sequence deviation (7/1821 nt). Technical relevance of deviation is not substantiated, thus entitlement to priority.
EPI information, 3/2008, pp. 91-102.
‘Shifting’ the priority year- Pitfall #4 Legal basis Art. 87 (4) EPC
A subsequent application in respect of the same subject-matter as a previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, - the previous application has been withdrawn, abandoned or refused, - without being open to public inspection and - without leaving any rights outstanding, and - has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
- modelled over Paris Convention Art. 4C (4)
‘Shifting’ the priority year- Pitfall #4 Time line
12 months
time
P2 1 Oct. 2010
EP or PCT
1 Oct. 2011 P1 1 May 2010
P1: • ‘dead’ • not published • not leaving rights outstanding • not used for priority
P1 and P2 filed in, or for, same state
‘Shifting’ the priority year- Pitfall #4
- …in, or for, the same state…
If P1 and P2 are filed in different states no shifting of priority year!
What if P1 and P2 are both EP applications? EP1 and EP2 inherently designating a plurality of states, possibly even a different number of states…
No case law yet, EPO legal division asked:
Yes, should be possible.
Summary
Pitfall #1; make sure the applicant, or group of applicants, is actually entitled to claim priority
Pitfall #2; get the assigments from the client before claiming priority.
Pitfall #3; ensure that the invention in the priority application and the later application contains the ‘same invention’ in a strict sense, preferably the same literally wording.
Pitfall #4; make sure all conditions of Art 4C(4) Paris Conv. or Art 87(4) EPC are fullfilled if ‘shifting’ priority year.
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