Pitfalls of priority


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The use of priority under the Paris Convention is an everyday tool for a patent professional. However, care should be taken to avoid some common mistakes. This presentation highlights some pitfalls that should be considered with respect to the applicant, assignment of the right to priority, the concept of the ‘same invention’ under European patent practice, and lastly the possibility of ‘shifting’ the priority year under certain conditions.

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Pitfalls of priority

  1. 1. Artist Bjørn Bjørnholt Pitfalls of priority Peter Sørensen M.Sc. Physics and Chemistry European Patent Attorney Team Leader T +45 87 32 18 04October 2011 E psn@pv.eu
  2. 2. Priority12 months, same invention, same applicant etc. 1 October 2010 1 October 2011 time 12 months
  3. 3. Priority Priority is an apparently simple and practical tool - but beware of the mistakes you can make! - or your opponent…!
  4. 4. Priority pitfalls Issues:  Applicant  Assignment  Same invention  ‘Shifting’ priority year
  5. 5. PriorityLegal 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
  6. 6. Legal basis is complex Paris convention DK NO ….. DE UK PCT EPC JP ….. US CN US DK NO ….. DK NO DE UK ….. DE UK CN EPC JP
  7. 7. Legal basisPriority - EPArt 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 Propertyor(b) any Member of the World Trade Organization,an application for a patent, a utility model or a utility certificate, or his successor intitle, shall enjoy, for the purpose of filing a European patent application in respect ofthe same invention, a right of priority during a period of twelve months from thedate of filing of the first application. - modelled over Paris Convention Art. 4A (1) & 4C(1)
  8. 8. PriorityPitfall #1Any person….or his successor in title,…EPO has strict interpretation; e.g. daugther company andmother company – no priority! 1 October 2010 1 October 2011 12 months time Applicant: A Applicant: B right to priority must be assigned from A to B before claiming priority
  9. 9. PriorityPitfall #1Any 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): 1 October 2010 1 October 2011 12 months time Applicants: A + B Applicant: A right to priority must be assigned from A+B to A before claiming priority
  10. 10. Priority Pitfall #2Any person….or his successor in title,…Assignments not signed when priority is later claimed; UK & FR recentcase law shows priority may be invalid! (EPI –journal, 2010, 1, p. 19-24) 1 October 2010 1 October 2011 12 months time Applicant: A Applicant: A Inventor: X
  11. 11. PriorityPitfall #2Any person….or his successor in title,…Assignments must be signed before priority is claimed.
  12. 12. PriorityPitfall #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.
  13. 13. PriorityPitfall #3…in respect of the same invention…. Claim 1: A+B A+B Claim 2: A+B+C1 Oct. 2010 1 Oct. 2011 time PUB: A+B 12 months
  14. 14. PriorityPitfall #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.
  15. 15. Priority Pitfall #3 …in respect of the same invention…. New priority year is started for A+B+C ! Claim 1: A+B A+B Claim 2: A+B+C1 Oct. 2010 1 Oct. 2011 1 Oct. 2012 time 12 months 12 months
  16. 16. PriorityPitfall #3…in respect of the same invention….New priority year for subject-matter A+B+C
  17. 17. 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 ! > 12MA+B A+B+C A+B A+B+C 12 months 12 months Priority lost if A+B = A+B+C
  18. 18. PriorityPitfall #3– ‘photographic approach’ for same invention related to DNAsequence- 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.
  19. 19. ‘Shifting’ the priority year- Pitfall #4Legal basisArt. 87 (4) EPCA subsequent application in respect of the same subject-matter as aprevious first application and filed in or for the same State shall beconsidered as the first application for the purposes of determiningpriority, 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 claiminga right of priority. - modelled over Paris Convention Art. 4C (4)
  20. 20. ‘Shifting’ the priority year- Pitfall #4 Time line P1 and P2 filed in, or for, same stateP1 P2 EP or PCT1 May 2010 1 Oct. 2010 1 Oct. 2011 time P1: • ‘dead’ • not published 12 months • not leaving rights outstanding • not used for priority
  21. 21. ‘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 ofstates…No case law yet, EPO legal division asked:Yes, should be possible.
  22. 22. 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.