The US approach is more flexible than the EPO approach, but
still aims to ensure a substantive connection between the priority
application and the later application claiming priority. Both aim to balance
certainty with fairness in determining valid priority claims.
1) The European Patent Office revoked a key CRISPR/Cas9 patent held by Broad Institute, MIT and Harvard due to an invalid priority claim.
2) The priority claim was invalid because one inventor and his institution were not named as applicants in the later PCT and European patent applications, and did not assign their rights from the original provisional applications.
3) This decision has significant implications for the patent landscape around CRISPR/Cas9 gene editing technology, and reaffirms the importance of properly establishing a valid chain of title between priority applications when filing patents in Europe and other jurisdictions.
The document summarizes key aspects of the US Manual of Patent Examining Procedure (MPEP). The MPEP describes US patent laws and regulations for prosecuting patent applications. It has 28 chapters covering topics like application filing procedures, patentability requirements, examination process, and post-grant procedures like appeals, corrections, and maintenance fees. The document provides an overview of several MPEP chapters, outlining procedures and guidelines for inventors and patent practitioners.
What Does it mean?
To understand go through the whole document...
Nothing but this is basically intended to give message about the term "Patent Applications"? What they are? Benefits? Drawback? etc
The document discusses the history of pharmaceutical patents and intellectual property rights. It notes that when countries were developing, like the US in the 19th century, they refused to recognize foreign intellectual property rights in order to further social and economic development using foreign works. The document then outlines the introduction of pharmaceutical patents in different countries in the late 20th century and the paradigm shift created by the TRIPS agreement in 1995, which required recognizing pharmaceutical patents globally. The document also discusses strategies used by pharmaceutical companies to extend patent protections and measures taken by countries to limit abusive practices.
Besides formal patent applications, start-ups can also apply for provisional patent applications. Find out what it takes to have a pending patent for your invention.
This document provides an overview of international patent filing options including the Paris Convention and Patent Cooperation Treaty (PCT). It discusses key differences and procedures for both options. The Paris Convention allows direct foreign filing within 1 year but is typically less expensive than PCT. PCT provides up to 30 months to decide where to file but is usually more expensive. It also summarizes PCT procedures including international search, publication, preliminary examination (optional) and national phase entry.
International Patenting: Paris Convention, Patent Cooperation Treaty, and Pat...Patterson Thuente IP
India's place in the patent world.
International patenting basics.
Patent Cooperation Treaty (PCT) overview.
Patent Prosecution Highway (PPH) benefits.
PCT - the international route to getting your patentTechHub Bucharest
Discover what are the benefits of applying for an international patent as opposed to getting a patent that is only guaranteed locally. Get briefed on the essential patenting criteria for tech products and more.
1) The European Patent Office revoked a key CRISPR/Cas9 patent held by Broad Institute, MIT and Harvard due to an invalid priority claim.
2) The priority claim was invalid because one inventor and his institution were not named as applicants in the later PCT and European patent applications, and did not assign their rights from the original provisional applications.
3) This decision has significant implications for the patent landscape around CRISPR/Cas9 gene editing technology, and reaffirms the importance of properly establishing a valid chain of title between priority applications when filing patents in Europe and other jurisdictions.
The document summarizes key aspects of the US Manual of Patent Examining Procedure (MPEP). The MPEP describes US patent laws and regulations for prosecuting patent applications. It has 28 chapters covering topics like application filing procedures, patentability requirements, examination process, and post-grant procedures like appeals, corrections, and maintenance fees. The document provides an overview of several MPEP chapters, outlining procedures and guidelines for inventors and patent practitioners.
What Does it mean?
To understand go through the whole document...
Nothing but this is basically intended to give message about the term "Patent Applications"? What they are? Benefits? Drawback? etc
The document discusses the history of pharmaceutical patents and intellectual property rights. It notes that when countries were developing, like the US in the 19th century, they refused to recognize foreign intellectual property rights in order to further social and economic development using foreign works. The document then outlines the introduction of pharmaceutical patents in different countries in the late 20th century and the paradigm shift created by the TRIPS agreement in 1995, which required recognizing pharmaceutical patents globally. The document also discusses strategies used by pharmaceutical companies to extend patent protections and measures taken by countries to limit abusive practices.
Besides formal patent applications, start-ups can also apply for provisional patent applications. Find out what it takes to have a pending patent for your invention.
This document provides an overview of international patent filing options including the Paris Convention and Patent Cooperation Treaty (PCT). It discusses key differences and procedures for both options. The Paris Convention allows direct foreign filing within 1 year but is typically less expensive than PCT. PCT provides up to 30 months to decide where to file but is usually more expensive. It also summarizes PCT procedures including international search, publication, preliminary examination (optional) and national phase entry.
International Patenting: Paris Convention, Patent Cooperation Treaty, and Pat...Patterson Thuente IP
India's place in the patent world.
International patenting basics.
Patent Cooperation Treaty (PCT) overview.
Patent Prosecution Highway (PPH) benefits.
PCT - the international route to getting your patentTechHub Bucharest
Discover what are the benefits of applying for an international patent as opposed to getting a patent that is only guaranteed locally. Get briefed on the essential patenting criteria for tech products and more.
Methods to improve Freedom to Operate analysisDauverC
This document discusses improving freedom to operate (FTO) analysis through comprehensive risk assessment and targeted patent searching. It provides an overview of patent filing trends, litigation statistics in key regions like the US and Europe, and a business case study on conducting an FTO analysis for a proposed fuel tank product. New semantic search technologies available in tools like PatentOptimizer can help enable more precise and recall patent searches to better inform FTO evaluations.
- Patents are territorial in nature and protection must be sought individually in each country.
- However, patent applications in different countries can be filed at different times to claim the same priority date if linked by a priority claim.
- For a subsequent application to have the priority date of the first, it must make a priority claim within 12 months and meet the conditions of the Paris Convention Treaty, which most countries adopted into their national laws.
SKGF_Presentation_Antibodies, Patents and Freedom to Operate: The Monoclonal ...SterneKessler
This document discusses the importance of freedom to operate (FTO) analysis for companies developing therapeutic antibody technologies. It notes that the patent landscape for antibody technologies has become more complex, making a thorough FTO analysis essential to avoid infringing the patents of others. The document outlines key concepts of patentability and dominance, describes strategies for clearing FTO such as design-arounds, invalidity arguments, and licensing. It provides examples of important patents in antibody humanization, expression, display, and other areas, as well as emerging antibody technologies that may create new patenting opportunities and risks.
1) Managing patent applications for inventions created by international teams of inventors from different countries can present challenges related to foreign filing license requirements.
2) Some jurisdictions require a foreign filing license for any patent application, while others only require one for national security or military inventions. Still others mandate that applications be filed domestically first.
3) Careful evaluation of inventor characteristics like citizenship and residency is needed to determine foreign filing requirements. Failure to comply can result in lost patent rights or penalties. Navigating these requirements can feel impossible without proper legal advice.
- Patent is a grant from the government that provides exclusive rights over an invention for a limited period of time, allowing the inventor to commercially benefit from the invention [1].
- The key requirements for patentability are that the invention must be novel, non-obvious, and industrially applicable [2].
- The patent process involves filing an application, examination by the patent office, potential pre-grant opposition, publication if granted, and the ability for post-grant opposition challenging the validity of the patent [3].
Covers legal aspects of Patenting in India.Explains the difference between Patent, Trademark and Copyright. Differentiates between patentable and non patentable inventions and explains the process of obtaining a patent, with case studies and examples.
Patent law provides exclusive rights to inventors for a limited period of time in exchange for publicly disclosing their inventions. India's patent law has evolved over time from the first patent law in 1856 to the modern law of 1970 which was amended in 1999 and 2005. The law provides for both product and process patents with a term of 20 years. It includes safeguards for compulsory licensing and parallel imports to ensure availability of medicines. The patent office has been modernized with increased examiners and IT systems to improve patent administration.
Georgetown Univ. Law Center Conference: Strategies for Worldwide Patent Litig...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Trend toward globalization of IP litigation
- The world is becoming increasingly interconnected
* Global supply and distribution chains
* Markets outside the U.S. taking on even greater importance
* Proliferation of standards
- Litigation outside the U.S. may offer important strategic advantages
The document summarizes key aspects of the U.S. patent system including the transition from a "first to invent" system to a "first inventor to file" system as a result of the America Invents Act of 2013. It provides details on patent requirements, international implications, effects on small vs. large companies, and examples of how the new system impacts patent disputes. The goal of the changes is to better align the U.S. with international standards and facilitate innovation.
The document discusses the Indian Patent Act of 1970, which governs the granting of patents in India and provides intellectual property protections for inventions. Key aspects covered include the requirements for an invention to be patentable, the types of patents granted, procedures for obtaining and renewing a patent, rights of a patentee, and exclusions from patentability. The patent system aims to reward inventors while ensuring availability of inventions for public use.
The New US Patent Law - From a Medical Device PerspectiveClark Wilson
The document discusses Clark Wilson, a registered patent attorney at the law firm Gardner Groff. Wilson has experience in patent law and the medical device industry. The document then provides information on recent changes to US patent law under the America Invents Act, including changes to prior art, first-inventor-to-file provisions, derivation proceedings, and post-issuance procedures.
The document discusses the Substantive Patent Law Treaty (SPLT) negotiations which aim to harmonize substantive patent law requirements like novelty, inventive step, and sufficiency of disclosure across countries. It notes several issues with the current draft of the SPLT, including that it may limit flexibility for countries to pursue their own patent policies, ignore geographic indications of traditional knowledge, and automatically treat unpublished applications as prior art. Adopting the current SPLT draft could undermine certain exceptions allowed for countries under the TRIPS agreement.
1) The document discusses client-attorney privilege (CAP) and whether it applies to communications with foreign patent agents and Japanese patent attorneys.
2) CAP is recognized in some U.S. courts for communications with Japanese patent attorneys since 1998 amendments to Japanese civil procedure codes established a professional secrecy obligation comparable to CAP.
3) However, there is no uniform international rule on CAP. The World Intellectual Property Organization is studying the issue but making slow progress. Bilateral agreements may be a faster way to resolve differences between countries.
This document provides an overview of patent searching, including what patents are, the patent classification system, and a 7-step process for conducting a preliminary patent search. Key points include:
- Patents protect inventions and designs for a limited time in exchange for public disclosure.
- The US classification system organizes patents by characteristics and relationships. It is recommended for searching prior art.
- The 7 steps include: describing the invention, finding classifications, reviewing class definitions, searching patent databases, analyzing search results, and reviewing cited references.
- Databases like PatFT and AppFT can be searched by classification to find prior patents and applications. Claims, drawings and other details should be reviewed.
A patent provides the holder the exclusive right to make, use, or sell an invention for a limited period of time. To be patentable, an invention must be novel, involve an inventive step, and be industrially applicable. There are several types of patent applications that can be filed under the governing Patents Act of 1970 in India, including ordinary, addition, and divisional applications. An international filing via the Patent Cooperation Treaty allows applying for patent protection in multiple countries by filing in a centralized location.
The presentation provided an overview of several major patent databases including WIPO's PatentScope, India's EKASWA and EPIDOS-INPADOC databases, and Canada's Canadian Patents Database. These databases allow users to search millions of patent documents from around the world and provide important information for researchers, innovators and those seeking to understand intellectual property rights. Effective use of the databases requires understanding how to conduct simple, advanced, equivalent and other specialized searches across different fields.
The document discusses freedom to operate (FTO) in intellectual property. It defines FTO as the ability to capitalize on an invention without challenges from other patent holders. The author cautions that during research and development, one must carefully record all materials, tools, and processes used and identify any existing exclusivity claims. Several strategies are discussed for circumventing or removing obstacles to FTO, such as paying to license a patent, exchanging technologies, inventing around a patent, or sharing patents or confidential information. The document provides an example of FTO considerations for biopharmaceutical research and development and discusses a technology using deuterium to extend drug effects. It concludes with discussing concepts and strategies for searching patents.
A patent is a set of exclusive rights granted by a national government to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter. There are three main types of patents: utility patents, design patents, and plant patents. Patents provide exclusivity, territorial limits, and a limited term of protection, usually 20 years. While intellectual property encompasses various creations of the mind like copyrights and trademarks, a patent specifically protects inventions. The criteria for an invention to be patentable include being novel, non-obvious, and useful. Patents can be applied for through national patent offices and the Patent Cooperation Treaty provides an international application process.
The document discusses different types of patent searches including patentability searches, freedom to operate searches, validity searches, landscape searches, state-of-the-art searches, bibliographic searches, continuing searches, assignment searches, number searches, name searches, subject searches, classification searches, family searches, and legal status searches. It provides details on the purpose, timing, and scope of each type of search.
T 1201/14: The Importance of Validly Claiming PrioritySSMPMarketing
The document discusses a European Patent Board decision regarding whether an applicant was entitled to claim priority from an earlier US provisional application. The Board found the applicant did not prove beyond reasonable doubt that it was the valid successor in title to claim priority, as required by the EPC. Specifically, the Board held the evidence was insufficient to establish a timely implicit or oral transfer of priority rights before the European filing date, as required regardless of the national laws governing formal assignment aspects. As a result, the Board revoked the patent due to lacking novelty over a public disclosure during the priority year.
Restoration of priority rights for patent applications in Vietnam – What you ...KENFOX IP & Law Office
A Chinese patent with 12 months priority deadline passed, but the patent applicant still wants to patent his invention in Vietnam. Is it possible to request for a restoration of priority right in the international patent application and then enter into Vietnam under PCT route?
Methods to improve Freedom to Operate analysisDauverC
This document discusses improving freedom to operate (FTO) analysis through comprehensive risk assessment and targeted patent searching. It provides an overview of patent filing trends, litigation statistics in key regions like the US and Europe, and a business case study on conducting an FTO analysis for a proposed fuel tank product. New semantic search technologies available in tools like PatentOptimizer can help enable more precise and recall patent searches to better inform FTO evaluations.
- Patents are territorial in nature and protection must be sought individually in each country.
- However, patent applications in different countries can be filed at different times to claim the same priority date if linked by a priority claim.
- For a subsequent application to have the priority date of the first, it must make a priority claim within 12 months and meet the conditions of the Paris Convention Treaty, which most countries adopted into their national laws.
SKGF_Presentation_Antibodies, Patents and Freedom to Operate: The Monoclonal ...SterneKessler
This document discusses the importance of freedom to operate (FTO) analysis for companies developing therapeutic antibody technologies. It notes that the patent landscape for antibody technologies has become more complex, making a thorough FTO analysis essential to avoid infringing the patents of others. The document outlines key concepts of patentability and dominance, describes strategies for clearing FTO such as design-arounds, invalidity arguments, and licensing. It provides examples of important patents in antibody humanization, expression, display, and other areas, as well as emerging antibody technologies that may create new patenting opportunities and risks.
1) Managing patent applications for inventions created by international teams of inventors from different countries can present challenges related to foreign filing license requirements.
2) Some jurisdictions require a foreign filing license for any patent application, while others only require one for national security or military inventions. Still others mandate that applications be filed domestically first.
3) Careful evaluation of inventor characteristics like citizenship and residency is needed to determine foreign filing requirements. Failure to comply can result in lost patent rights or penalties. Navigating these requirements can feel impossible without proper legal advice.
- Patent is a grant from the government that provides exclusive rights over an invention for a limited period of time, allowing the inventor to commercially benefit from the invention [1].
- The key requirements for patentability are that the invention must be novel, non-obvious, and industrially applicable [2].
- The patent process involves filing an application, examination by the patent office, potential pre-grant opposition, publication if granted, and the ability for post-grant opposition challenging the validity of the patent [3].
Covers legal aspects of Patenting in India.Explains the difference between Patent, Trademark and Copyright. Differentiates between patentable and non patentable inventions and explains the process of obtaining a patent, with case studies and examples.
Patent law provides exclusive rights to inventors for a limited period of time in exchange for publicly disclosing their inventions. India's patent law has evolved over time from the first patent law in 1856 to the modern law of 1970 which was amended in 1999 and 2005. The law provides for both product and process patents with a term of 20 years. It includes safeguards for compulsory licensing and parallel imports to ensure availability of medicines. The patent office has been modernized with increased examiners and IT systems to improve patent administration.
Georgetown Univ. Law Center Conference: Strategies for Worldwide Patent Litig...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Trend toward globalization of IP litigation
- The world is becoming increasingly interconnected
* Global supply and distribution chains
* Markets outside the U.S. taking on even greater importance
* Proliferation of standards
- Litigation outside the U.S. may offer important strategic advantages
The document summarizes key aspects of the U.S. patent system including the transition from a "first to invent" system to a "first inventor to file" system as a result of the America Invents Act of 2013. It provides details on patent requirements, international implications, effects on small vs. large companies, and examples of how the new system impacts patent disputes. The goal of the changes is to better align the U.S. with international standards and facilitate innovation.
The document discusses the Indian Patent Act of 1970, which governs the granting of patents in India and provides intellectual property protections for inventions. Key aspects covered include the requirements for an invention to be patentable, the types of patents granted, procedures for obtaining and renewing a patent, rights of a patentee, and exclusions from patentability. The patent system aims to reward inventors while ensuring availability of inventions for public use.
The New US Patent Law - From a Medical Device PerspectiveClark Wilson
The document discusses Clark Wilson, a registered patent attorney at the law firm Gardner Groff. Wilson has experience in patent law and the medical device industry. The document then provides information on recent changes to US patent law under the America Invents Act, including changes to prior art, first-inventor-to-file provisions, derivation proceedings, and post-issuance procedures.
The document discusses the Substantive Patent Law Treaty (SPLT) negotiations which aim to harmonize substantive patent law requirements like novelty, inventive step, and sufficiency of disclosure across countries. It notes several issues with the current draft of the SPLT, including that it may limit flexibility for countries to pursue their own patent policies, ignore geographic indications of traditional knowledge, and automatically treat unpublished applications as prior art. Adopting the current SPLT draft could undermine certain exceptions allowed for countries under the TRIPS agreement.
1) The document discusses client-attorney privilege (CAP) and whether it applies to communications with foreign patent agents and Japanese patent attorneys.
2) CAP is recognized in some U.S. courts for communications with Japanese patent attorneys since 1998 amendments to Japanese civil procedure codes established a professional secrecy obligation comparable to CAP.
3) However, there is no uniform international rule on CAP. The World Intellectual Property Organization is studying the issue but making slow progress. Bilateral agreements may be a faster way to resolve differences between countries.
This document provides an overview of patent searching, including what patents are, the patent classification system, and a 7-step process for conducting a preliminary patent search. Key points include:
- Patents protect inventions and designs for a limited time in exchange for public disclosure.
- The US classification system organizes patents by characteristics and relationships. It is recommended for searching prior art.
- The 7 steps include: describing the invention, finding classifications, reviewing class definitions, searching patent databases, analyzing search results, and reviewing cited references.
- Databases like PatFT and AppFT can be searched by classification to find prior patents and applications. Claims, drawings and other details should be reviewed.
A patent provides the holder the exclusive right to make, use, or sell an invention for a limited period of time. To be patentable, an invention must be novel, involve an inventive step, and be industrially applicable. There are several types of patent applications that can be filed under the governing Patents Act of 1970 in India, including ordinary, addition, and divisional applications. An international filing via the Patent Cooperation Treaty allows applying for patent protection in multiple countries by filing in a centralized location.
The presentation provided an overview of several major patent databases including WIPO's PatentScope, India's EKASWA and EPIDOS-INPADOC databases, and Canada's Canadian Patents Database. These databases allow users to search millions of patent documents from around the world and provide important information for researchers, innovators and those seeking to understand intellectual property rights. Effective use of the databases requires understanding how to conduct simple, advanced, equivalent and other specialized searches across different fields.
The document discusses freedom to operate (FTO) in intellectual property. It defines FTO as the ability to capitalize on an invention without challenges from other patent holders. The author cautions that during research and development, one must carefully record all materials, tools, and processes used and identify any existing exclusivity claims. Several strategies are discussed for circumventing or removing obstacles to FTO, such as paying to license a patent, exchanging technologies, inventing around a patent, or sharing patents or confidential information. The document provides an example of FTO considerations for biopharmaceutical research and development and discusses a technology using deuterium to extend drug effects. It concludes with discussing concepts and strategies for searching patents.
A patent is a set of exclusive rights granted by a national government to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter. There are three main types of patents: utility patents, design patents, and plant patents. Patents provide exclusivity, territorial limits, and a limited term of protection, usually 20 years. While intellectual property encompasses various creations of the mind like copyrights and trademarks, a patent specifically protects inventions. The criteria for an invention to be patentable include being novel, non-obvious, and useful. Patents can be applied for through national patent offices and the Patent Cooperation Treaty provides an international application process.
The document discusses different types of patent searches including patentability searches, freedom to operate searches, validity searches, landscape searches, state-of-the-art searches, bibliographic searches, continuing searches, assignment searches, number searches, name searches, subject searches, classification searches, family searches, and legal status searches. It provides details on the purpose, timing, and scope of each type of search.
T 1201/14: The Importance of Validly Claiming PrioritySSMPMarketing
The document discusses a European Patent Board decision regarding whether an applicant was entitled to claim priority from an earlier US provisional application. The Board found the applicant did not prove beyond reasonable doubt that it was the valid successor in title to claim priority, as required by the EPC. Specifically, the Board held the evidence was insufficient to establish a timely implicit or oral transfer of priority rights before the European filing date, as required regardless of the national laws governing formal assignment aspects. As a result, the Board revoked the patent due to lacking novelty over a public disclosure during the priority year.
Restoration of priority rights for patent applications in Vietnam – What you ...KENFOX IP & Law Office
A Chinese patent with 12 months priority deadline passed, but the patent applicant still wants to patent his invention in Vietnam. Is it possible to request for a restoration of priority right in the international patent application and then enter into Vietnam under PCT route?
The document summarizes key aspects of United States patent law. It discusses that patents can be obtained for processes, machines, compositions of matter, and some plant varieties. To be patentable, an invention must be novel, non-obvious, and adequately disclosed. There are three main types of patents: utility patents, design patents, and plant patents. The document also outlines the patent application and examination process, requirements for patentability, what constitutes patent infringement, and defenses to infringement allegations.
The America Invents Act made significant changes to US patent law, including changing from a "first to invent" system to a "first inventor to file" system. It increased most patent fees by 15% and created new post-grant review proceedings like inter partes review and post grant review. The act also established provisions such as supplemental examination, micro entity status for reduced fees, and limitations to false marking claims. The changes modernized US patent law to better align with international standards.
Sequoia designs process equipment for distillation, evaporation, hydrogenation, filtration, and absorption, as applied to the recycling of liquids such as used oils, waste fuels, and industrial wastes.
This document discusses the complexities of complying with foreign filing license (FFL) requirements when inventors from different countries collaborate on cross-border inventions. It notes that many jurisdictions require FFL applications or restrict foreign filings for reasons of national security. The US, China, India, Spain, France and other countries are summarized in terms of their FFL processes, penalties for non-compliance, and strategies for Chinese, French, Spanish and US inventors. In conclusion, it recommends keeping accurate inventor information, obtaining legal opinions, and educating teams to navigate these international FFL requirements.
I’m so confused — what is prior art now? Marc Hubbard
How did the America Invents Act (AIA) change the definition of prior art when it switched the U.S. patent system from first-to-invent to first-to-file.
This document provides a brief overview of US utility patent law and the patenting process. It discusses the different types of patents including design, plant, and utility patents. It describes the basic patenting timeline including filing a provisional or non-provisional patent application and undergoing examination. Key concepts like patentability requirements of utility, novelty, and non-obviousness are introduced. Cost estimates and strategies for obtaining and enforcing a patent are also summarized.
The document provides information on different types of patent applications in India. It discusses provisional applications, which are filed before an invention is finalized to claim priority. Non-provisional or ordinary applications are filed when priority is not claimed. Convention applications allow claiming priority based on applications filed in convention countries. PCT international applications can be filed to seek protection in multiple countries simultaneously. National phase applications must then be filed in each designated country. The document also discusses patent of addition applications for modifications of existing inventions, and divisional applications which divide one application into multiple applications.
The document discusses two methods for expediting patent rights: (1) early publication of provisional applications to obtain provisional rights, and (2) filing a petition to make an application special to receive early examination. It provides details on the requirements and procedures for both approaches, including how to request early publication, the conditions that warrant special status, and the accelerated examination process.
The document discusses key aspects of patent law in India including definitions of patents, inventions, and prior art. It covers the patent application process, requirements for granting a patent including novelty, non-obviousness, and utility. Grounds for not granting patents are provided. The roles of provisional and complete specifications are defined. Infringement, compulsory licensing, and related procedures are also summarized.
A patent is the granting of a property right by a sovereign authority to an inventor. This grant provides the inventor exclusive rights to the patented process, design, or invention for a designated period in exchange for a comprehensive disclosure of the invention.
1) A patent is a legal document issued by a government that gives an inventor exclusive rights over their invention for a period of time, usually 20 years.
2) There are several types of patent applications including provisional, non-provisional, convention, and PCT applications. Provisional applications allow early filing and priority date while non-provisional/PCT applications undergo examination.
3) The PCT process allows filing a single international patent application to seek protection in multiple countries simultaneously, providing time to seek protection abroad before foreign filing deadlines.
Patent Law in 2014: Act fast or get left behindsteve_ritchey
A presentation on patent law fundamentals, the changes caused resulting from the America Invents Act, other topical patent law issues such as new developments on patentable subject matter, appellate review of claim constructions, and best practices
The document discusses the foundation of patent law. It covers the different types of patents including utility patents, design patents, and plant patents. It explains that a patent is a legal right granted by the government that allows the owner to prevent others from making, using, or selling the invention. It also outlines the requirements for an invention to be patentable, including that it must be useful, novel, and non-obvious. Finally, it discusses factors considered in determining if an invention is non-obvious like analogous prior art, the level of ordinary skill in the art, and secondary considerations.
Knobbe Martens co-hosted a 2-hour seminar in Orange County on Protecting Your Intellectual Property with a distinguished panel of global patent practitioners.
Laos has been a Contracting Party to the Paris Convention for the Protection of Industrial Property (Paris Convention) since October 8, 1998. It has also been a Contracting Party to the Patent Cooperation Treaty (PCT) since June 14, 2006.
Under the Paris Convention to which Laos is a member, patent applicants are entitled to a right of priority if the same filing has been made within 12 months in any other other nation that is also a member of the Paris Convention. This is extremely advantageous for patent owners since, after filing the initial application in their home country, they have a year to pick which other countries they wish to register in prior to initiating international filings.
Under the PCT to which Laos is a member, foreign businesses may obtain patents in Laos quite easily as formal examinations, searches and publications are conducted at the WIPO’s International Bureau. This mechanism allows for a longer period of ‘wait and see’ before the applicant decides which nations require a patent. Using the PCT approach, you have up to 31 months from the date of priority (see Article 6.4 of Decision No. 1714/MOST) to determine whether to file a patent application in Laos or other countries.
Similar to Priority under the Paris Convention: Are National/Regional "Sonderwege" Acceptable? - The CRISPR/Cas 9 Case (20)
IP Attorney - Tom Dickson - Providing protection for new ideasPatterson Thuente IP
The United States Constitution grants Congress the power to enact laws to protect inventions and creative works. Congress has used this power to establish the patent and copyright systems, which provide limited-time monopolies for inventors and creators in exchange for publicly disclosing their work. These systems aim to promote innovation and creativity by rewarding inventors and artists with exclusive rights for a limited period before their works enter the public domain, allowing others to build upon their ideas.
IP Attorney - Paul Onderick - We get to see new, fresh ideas before anyone elsePatterson Thuente IP
Paul Onderick said that working at an early-stage startup allows him to see new ideas before others. He enjoys being exposed to fresh concepts at a company before products and services are released to the public. Working at an early startup provides the opportunity to help shape new products and technologies from the beginning.
Jim Patterson argues that excellence stems from empathy. He believes that understanding others and their perspectives is key to achieving high quality work. By putting oneself in another's shoes, one can gain insights that lead to improved performance and outcomes.
Jim Patterson's message is short and concise, focusing on just one key point - that employees should focus their efforts on clients. Keeping clients as the top priority will help drive business success.
IP Attorney - Eric Chadwick - Innovation is the engine that makes our economy goPatterson Thuente IP
Innovation is key to economic growth. Eric Chadwick notes that innovation drives the economy forward. New ideas and technologies are what fuel economic activity and progress.
Dan Bruzzone believes strongly in the power of ideas. He values ideas above all else, as evidenced by his quote "Ideas are worth everything." This short quote encapsulates Bruzzone's view that ideas have immense worth and should be highly valued.
IP Attorney - Chris Hansen - It's possible to cut corners, but we absolutely ...Patterson Thuente IP
Chris Hansen said that while it is possible to cut corners, his company would never do so. They aim to avoid taking shortcuts that could compromise quality. The statement suggests a commitment to doing things the right way and not settling for less than full integrity in their work.
Ideas are powerful tools that can give you an advantage. Having innovative ideas allows you to solve problems in new ways and see opportunities that others may miss. Developing your ability to generate good ideas will serve you well in both your personal and professional life.
X conceives Invention A+B first but files an application after Y independently publishes disclosure of A+B. Y's publication is less than one year before X's filing. Under the assumptions, A+B is patentable over other prior art and each inventor independently conceived the invention. The analysis examines whether X is entitled to a patent under post-AIA first-inventor-to-file law and how it compares to pre-AIA first-to-invent law.
America Invents Act (AIA) Patent Scenarios.
AIA First Inventor to File with Grace (FTFG).
Suggested Post-AIA Filing Strategies.
Future of IP.
A Patent Troll Problem.
U.S. Patents and Lawsuits.
Drones.
Flying Saucers.
Early Drones.
Gaming Drones.
Drone Market.
US Regulatory Landscape.
What is IP?
Offensive IP Tools.
Good Patenting.
Freedom to Operate (FTO).
IP Insurance.
UP Patents and Lawsuits.
America Invents Act (AIA).
First-Inventor-to-File (FITF).
"PTAB" Patent Death Squad.
The Future of IP.
For Effective Filing Dates and Other AIA Best Practices.
Big Changes.
Comparisons.
First-Inventor-to-File (FITF).
Mind the Gap.
Effective Filing Date (EFD).
AIA Team Exemption.
Suggested FITF Strategies.
Double Patenting.
Suggested AIA Strategies.
Advanced Practice Under the American Invents Act (AIA).
Post Issuance Proceedings.
Kill Rates.
IPX.
Review Proceedings.
Insights and Lessons.
Trial Timeline.
What's Next?
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American Invents Act (AIA) Overview.
AIA Transitions.
Changes.
Post Issuance Proceedings.
What You Need For a Patent.
Comparisons.
First Inventor to File with Grace (FTFG).
Prosecution Under FTFG.
What's Your Strategy?
Prior Art.
Art Exceptions.
FITF "Scenarios".
Comparisons.
Transition Gap.
FITF Rules.
Scope of Patent Filing.
Prosecution Under First Inventor to File with Grace (FTFG).
Suggested FITF Strategies.
More Complicates than 3D Chess?
America Invents Act (AIA).
Timetable for AIA Transitions.
Changes.
Proceedings.
Review.
Art.
First Inventor to File with Grace (FTFG).
Tips/Pointers for Transitions.
What's Next?
The Leahy-Smith American Invents Act: More Complicated than 3D Chess?Patterson Thuente IP
American Invents Act (AIA).
Changes.
Proceedings.
Art.
How Long Will it Take to Cut Over to AIA?
How Much Will it Take to Get Up to Speed on the AIA?
First-to-File with Grace (FTFG).
Tips & Pointers for Transition.
What's Next?
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Priority under the Paris Convention: Are National/Regional "Sonderwege" Acceptable? - The CRISPR/Cas 9 Case
1. June 21, 20181
Priority under the Paris Convention:
Are National/Regional “Sonderwege”
Acceptable?
– The CRISPR/Cas 9 Case
Jay Erstling
June 14, 2018
PCT Inventors, applicants, and assignees.
How Are Questions of Internal & External Priority
Addressed under Paris and PCT?
What Freedom Do Designated States Have to Determine who is the
“Person Who Has Duly Filed an Application” to which Priority is Claimed?
Are Applicant-Inventors in a Provisional Application Only Applicants
with Respect to the Inventive Concepts to which they Contributed?
Did US Law Require the Omission of Applicants in a PCT Application
if They Did Not Contribute to the Subject Matter Claimed?
3. My Response
Are national/regional “Sonderwege” available for determining the validity of
priority claims under the Paris Convention?
Sonderweg: A distinct (special) course of action followed by a nation
My initial response:
Yes, the Paris Convention gives member countries significant freedom
to determine the validity of priority claims
• Provided the “weg” chosen does not violate the Paris Convention
My more nuanced response:
A “Sonderweg” (if my understanding is correct) assumes that there is an
established “weg,” but a nation/region has chosen its own special
course
• Apart from certain basic requirements, the Convention does not
establish a “weg,” so there is nothing to be “sonder” about
3
4. My Response
But in any event –
The EPC and European case law are fully compatible with the Paris
Convention
• The case law and practice require identity of applicants for a valid
priority claim
– When there are joint applicants, the claim to priority is valid
only if each applicant of the priority application is an applicant
of the application claiming priority or a successor in title to
whom the right of priority has been transferred
US law concerning external priority (although maybe a little bit
“Sonder”), when interpreted properly, is also compatible with the Paris
Covention
4
5. Background
Patent at issue was EP 2,771,468 (“Engineering of Systems, Methods and
Optimized Guide Compositions for Sequence Manipulation”)
Applicants: Broad Institute, MIT, Harvard
Issued on 11 February 2015
Resulted from a European patent application that was a PCT regional
phase application
• PCT/US2013/074819
– Filed on 12 December 2013
PCT application claimed priority to 12 US provisional applications
• First two provisional application (P1 and P2) were filed on 12
December 2012 and 2 January 2013
5
6. Background
The grant of the patent was opposed by 9 opponents
The large number is testament to the importance of the patent to the
CRISPR landscape
6
8. P1 and P2 Inventors and Assignees
At the time P1 and P2 were filed, each named Zhang, Cong, Habib and
Marraffini as inventors. Later, inventors Cox, Hsu, Lin and Ran were
added.
Zhang, Habib and Lin assigned P1 and P2 to The Broad Institute, Inc. Cox
assigned P1 and P2 to the Massachusetts Institute of Technology.
Marraffini assigned P1 and P2 to Rockefeller University. Cong, Hsu and
Ran assigned P1 and P2 to the President and Fellows of Harvard
College.
8
9. PCT Inventors, Applicants and Assignees
When the PCT application was filed, it named Zhang, Cong, Hsu and Ran
as inventors and applicants, and The Broad Institute, Inc., Massachusetts
Institute of Technology, and President and Fellows of Harvard College as
applicants.
Though Habib, Lin and Cox were not named as inventors, their rights were
transferred to The Broad Institute, Inc. (Habib and Lin) and the
Massachusetts Institute of Technology (Cox), both of which were named
as applicants.
Neither Marraffini (as an inventor or applicant) nor Rockefeller University
(as an applicant) was named on the PCT application or the later EP
regional phase application, nor were any rights in the invention(s) or of
priority in P1 or P2 transferred by either Marraffini or Rockefeller University
to any of the inventors or applicants named on the PCT application and the
EP regional phase application
9
10. Issue in the opposition
Whether the failure of Patentee to name Marraffini or Rockefeller
University as an applicant in the PCT application or to obtain assignments
from Marraffini or Rockefeller University of their rights of priority in P1 and
P2 prior to the filing of the PCT application invalidated any claim of priority
that Patentee may have had to P1 or P2 in the EP patent.
Whether the EP requirement for identity between the applicants for a
EP application and the applicants for an earlier application from which
priority is claimed (or their successors in title) should apply in this case
Without a valid priority claim, the patent was sure to fail for lack of novelty
because of important intervening prior art (including a publication by the
principal inventor)
10
11. EPO Oppositions
Opposition to a European may be filed by anyone.
Opposition must be filed within nine months of the publication of the
patent grant.
• The procedure may involve multiple opponents.
Opposition can only be based on three grounds specified in Article 100
of the EPC
• that the subject-matter of the patent is not patentable for lack of
novelty, inventive step, industrial applicability, or lack of
patentable subject matter
• that the invention is not disclosed clearly and completely enough
for a person skilled in the art to carry it out
• that the patent's subject-matter extends beyond the content of the
application as filed.
11
12. Legal Sources at Issue
Paris Convention
Article 4A(1)
Patent Cooperation Treaty (PCT)
Article 8
US Patent Act
35 USC § 119
European Patent Convention (EPC)
Article 87
12
13. Paris Convention
Establishes the right of priority
Article 4A(1)
• “Any person who has duly filed an application for a patent… or his
successor in title, shall enjoy, for the purpose of filing in the other
countries, a right of priority….”
Basic assumptions called into question during the opposition
• The right of priority arises solely from the act of filing an
application
• The right of priority is an independent right linked to the act of
filing an application
– It may be separately transferred
• The substantive validity of a priority claim is subject to the law of
the country in which the application claiming priority was filed
13
14. PCT
Article 8 – Claiming Priority
“(1) The international application may contain a declaration… claiming
the priority of one or more earlier applications filed in or for any country
party to the Paris Convention for the Protection of Industrial Property.
“(2)(a) Subject to the provisions of subparagraph (b), the conditions for,
and the effect of, any priority claim declared under paragraph (1) shall
be as provided in Article 4… of the Paris Convention for the Protection
of Industrial Property.
“(2)(b) The international application for which the priority of one or more
earlier applications filed in or for a Contracting State is claimed may
contain the designation of that State. Where, in the international
application, the priority of one or more national applications filed in or for
a designated State is claimed…, the conditions for, and the effect of, the
priority claim in that State shall be governed by the national law of that
State.”
14
15. PCT
Basic assumptions called into question during the opposition
To claim priority, a PCT application must be filed by the person(s) who
filed the earlier application or their successors in title.
The determination of the validity of a priority claim takes place primarily
during the national or regional phase
• Responsibility of the designated office in accordance with its
national or regional (domestic) law
As a “special agreement” under Article 19 of the Paris Convention, PCT
provisions have to be consistent with the Paris Convention
15
16. US Law
35 USC § 119. Benefit of Earlier Filing Date; Right of Priority
“(a) An application for patent for an invention filed in this country by any
person who has, or whose legal representatives or assigns have,
previously regularly filed an application for a patent for the same
invention in a foreign country which affords similar privileges in the case
of applications filed in the United States or to citizens of the United
States… shall have the same effect as the same application would have
if filed in this country on the date on which the application for patent for
the same invention was first filed in such foreign country, if the
application in this country is filed within 12 months from the earliest date
on which such foreign application was filed. …”
• 35 USC § 119(a) codifies the Paris Convention right of priority
– External priority
– Establishes the right to claim priority to a prior application filed
in a foreign country
16
17. US Law
35 USC § 119. Benefit of Earlier Filing Date; Right of Priority
“(e)(1) An application for patent under section 111(a) or section 363
for an invention disclosed in a provisional application filed by an
inventor or inventors named in the provisional application, shall have
the same effect, as to such invention, as though filed on the date of
the provisional application…, if the application for patent is filed not
later than 12 months after the date on which the provisional
application was filed and if it contains or is amended to contain a
specific reference to the provisional application. …”
35 USC § 119(e) provides a right for a US application to claim
domestic benefit to a provisional application
An example of internal priority
17
18. EPC
Article 87. Priority right
“(1) 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…, 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.”
• Follows the language of the Paris Convention
• The EPC forms a “complete, self-contained code of rules of law
on the subject of claiming priority”
– But as a “special agreement” under the Paris Convention (like
the PCT), its provisions have to be consistent with Paris
18
19. My Role in the Opposition
Expert for Opponent #1, charged with
commenting on the validity of the priority
claims to P1 and P2
My opinion was that the failure of the lack
of identity (clear chain of title) between the
European and PCT application resulting
from the failure to name or obtain
assignments from M and RU invalidated
the priority claims
Patentee’s argument was that M was not an
inventor of the inventions embodied in the
PCT application and therefore there was no
obligation to name him or obtain an
assignment
19
20. Questions that I Was Asked to Address
1. The US Patent Act provides for both internal and external priority. How
are questions of internal and external priority addressed by the Paris
Convention and PCT?
2. Do states designated in a PCT application have some freedom to
determine who is the “person who has duly filed an application” to which
priority is claimed?
3. Under US law, are applicant inventors in a US provisional application
only applicants with respect to the inventive concepts to which they
contributed?
4. Did US law and USPTO rules require the omission of individuals as
applicants in the PCT application if they did not contribute to the subject
matter claimed?
20
21. 1. How Are Questions of Internal & External Priority
Addressed under Paris and PCT?
Under the Paris Convention
The Paris Convention is silent about internal priority
• Internal priority is relevant to US prosecution when a PCT
application enters US national phase
• But internal priority is irrelevant to prosecution in the EPO when
the priority claim is to a US application
The priority claims to P1 and P2 in the European regional phase were
external priority claims
• The Euro-PCT application claimed priority to applications filed in
another country
• Priority governed by Paris Convention Article 4A(1)
21
22. Internal & External Priority under PCT
The PCT recognizes both
PCT Article 8(2)(a): External priority
• The effect of the priority claim is governed in accordance with
Article 4 of the Paris Convention
– Article 8(2)(a) is the applicable provision concerning the
validity of the P1 and P2 priority claim
PCT Article 8(2)(b): Internal priority (domestic benefit)
• Where the PCT application claims the priority of an application
from a designated state, the effect of the priority claim in that
state is governed in accordance with that state’s national law
– Self-designation: Germany, Japan, Korea
– Provisional applications: US
22
23. External Priority under the Paris Convention
Right of priority is an independent right linked to the act of filing an
application
Paul Mathély: “The right of priority arises from the filing of a first
application…. As soon as it comes into existence, the right of priority
immediately becomes detached from the application which gave rise to
it. It then has an existence of its own.”
When an application claims priority, the substantive validity of the priority
claim is subject to the law of the country in which the application was filed
Paul Mathély: “When a corresponding application is filed with a claim to
priority, the right of priority will become a reality, but at that moment it
becomes an accessory of the application whose validity it sustains. And
since it is an accessory of the application, it will be submitted to the
same legal regime as that application.”
23
24. EPO Case Law is Consistent with the Paris Convention
European case law holds that the right of priority is a substantive property
right that is distinct from the property right in the first application.
As a result, the right of priority may be transferred even though the right
to the application is not
European commentators agree
“The applicant may transfer the right of priority to al successor in title,
independently of the right to the grant of the patent….” (D. Visser, The
Annotated European Patent Convention, 24th revised ed.)
“The right of priority may be transferred to a successor in title
independently of the transfer or non-transfer of the first application on
which it was based, and it can therefore remain with the original
application or be transferred to a third person. The right of priority
based on a first application can also be transferred independently for
one or more countries.” (G. Bodenhausen, Guide to the Application of
the Paris Convention)
24
25. 2. What Freedom Do Designated States Have to
Determine who is the “Person Who Has Duly Filed an
Application” to which Priority is Claimed?
Once an application enters national/regional phase, domestic law governs
PCT Article 27(5) provides that “nothing in this Treaty and Regulations
is intended to be construed as prescribing anything that would limit the
freedom of each Contracting State to prescribe such substantive
conditions of patentability as it desires.”
• Substantive conditions = “the criteria of national law in respect of
prior art and other conditions of patentability”
– As opposed to the form and contents of the application
• The determination of the validity of a priority claim is substantive
– Especially where there is intervening art
25
26. States Have Significant Freedom
The determination of who is the person who has duly filed an application
from which Paris Convention priority is claimed is a matter of substantive
law
As such, countries have the right to make the determination
Different countries take different approaches and Paris and PCT
accommodate the differences
• Many follow EPO and require identity between the applicant for a
PCT application and the applicant or successor in title for the
application from which priority is claimed
– Provides degree of certainty and clarity, and is not unduly
burdensome
26
27. US Approach
US is somewhat of an outlier
Boston Scientific Scimed vs. Medtronic (Fed. Cir. 2007)
• A nexus must exist between the inventor and the foreign applicant
at the time the foreign application was filed
– The determination of whether a nexus exists is solely a
question of US law
27
28. Boston Scientific Scimed v. Medtronic
Question was whether a later US application was entitled to the benefit of
the filing dates of two earlier-filed EP applications, when the applicants of
the US application and the EP priority applications were not the same
Court held that the later US application filed by joint inventors was not
entitled to claim priority to two EP applications filed by a French
company because at the time the EP applications were filed, no legal
relationship existed between the French company and the inventors,
nor was the French company acting on behalf of the inventors
• Without a nexus, a priority claim in invalid
That the foreign application may have been filed in accordance with the
foreign country’s law “has no bearing here.”
• Foreign law is irrelevant to the determination of priority rights
under US law
28
29. Boston Scientific Scimed
The Boston Scientific case is consistent with other US cases that have
rejected attempts to impose US law on other jurisdictions
Voda v. Cordis (Fed. Cir. 2007)
• “The Paris Convention thus clearly expresses the independence
of each country’s sovereign patent systems and their systems for
adjudicating those patents. Nothing in the Paris Convention
contemplates nor allows one jurisdiction to adjudicate the patents
of another….”
• “As with the Paris Convention, the text of the PCT maintains the
independence of each country’s patents.”
29
30. Boston Scientific Scimed
And from the US Supreme Court
Microsoft Corp. v. AT&T, (Sup. Ct., 2007)
• “The presumption that United States law governs domestically but
does not rule the world applies with particular force in patent law.”
• “Our patent system makes no claim to extraterritorial effect; our
legislation d[oes] not, and [was] not intended to operate beyond
the limits of the United States, and we correspondingly reject the
claims of others to such control over our markets.”
• “[F]oreign law may embody different policy judgments about the
relative rights of inventors, competitors, and the public in patent
inventions.”
So (from a US perspective), countries can exercise freedom to determine
the validity of priority claims, and they should refrain from imposing their
approach on other countries
30
31. Choice of Law
A designated state/region is free to apply its own substantive law to
determine the validity of a priority claim
The Boston Scientific Scimed court got it right
Neither the Paris Convention nor the PCT provide any basis for
applying the substantive law of the priority country
Edwards Lifesciences AG vs. Cook Biotech Inc. (2009, Lord Justice
Kitchin)
Issue was whether a US provisional application could provide the basis
for a valid priority claim when not all the applicants or successors in title
were named in the application claiming priority
Justice Kitchin did not consider US law in holding that:
• Where the first-filed application contains multiple applicants, the
later filed application must be made by all of them, or by their
successors in title
31
32. 3. Are Applicant-Inventors in a Provisional Application
Only Applicants with Respect to the Inventive Concepts
to which they Contributed?
Patentee argued that the failure to name priority applicants “has no
consequence for the validity of the priority claim to P1 and P2”
That applicants for a US provisional application are “only considered
applicants for those inventive concepts to which they have contributed”
Contrary to longstanding EPO case law
• Also contrary (in my opinion) to current US law
Problem with this argument is that Patentee incorrectly conflated the terms
“applicant” and “inventor”
Inventors’ rights are based on the contribution to the subject matter of
an application, but applicants’ rights stem from the application itself
P1 and P2 named individual applicants, without specifying any limits
based on inventorship contribution
32
33. Status of an Applicant under the AIA
The AIA changed the nature of an “applicant”
The status of an applicant is no longer restricted to inventors, and
“applicant” and “inventor” are not synonymous
• An applicant is defined with respect to the application as a whole
(not just to individual inventive concepts)
• As a result of the AIA, an “applicant” may be the “inventor,” “all of
the joint inventors,” “assignee,” “obligated assignee,” “person
applying for a patent,” or a “person who otherwise shows
sufficient proprietary interest” (37 CFR § 1.42)
References to “inventors” and “inventorship” concern only internal
priority claims to a US provisional application (35 USC § 119(e))
• The Paris Convention and 35 USC § 119(a) govern external
priority and make clear that each applicant has rights in the entire
application, including an independent right of priority
33
34. Nature of an Application
An application is a single application regardless of how many “independent
and distinct” inventions it discloses or claims
Any applicant named in a US application has rights in the whole
application
• “All parties having any portion of the ownership in the patent
property must act together as a composite entity in patent matters
before the Office” (MPEP § 301(IV))
34
35. Paris Convention Rejects Limiting Applicants by
Inventorship
The Paris Convention Diplomatic Conference considered and rejected the
idea of limiting applicants by inventorship.
A proposed draft by the Belgian delegate would have created a link
between the right of priority and the right to the patent
• He argued that “C’est l’auteur d’une invention seul qui doit jouir
d’un droit de priorité,” and proposed:
– “L’auteur d’une invention,… qui aura, dans l’un des États
contractants, régulièrement déposé la demande de brevet,…
jouira pour effectuer le dépôt dans les autres États, d’un droit
de priorité”
The delegates rejected the inclusion of “l’auteur d’une invention”
because “ce n’est pas l’auteur seul qui a le droit de demander un brevet
d’invention”
35
36. Limiting Applicants by Inventorship Would be Unduly
Burdensome
From a practical/policy perspective
Limiting applicants by inventorship would require the designated office
to undertake an inventorship investigation under the law of the priority
country for every application claiming priority to a foreign country
The designated office would also have to reconsider the inventorship
determination whenever the applicant amended the claims
The argument falsely assumes that all offices would define inventorship
in the same way
• US and European practice often do not identify the same
“invention” in any particular patent application
– Due largely to the difference between restriction practice and
unity of invention
36
37. The Right of Priority Is Not Conditioned on an Inventor’s
Contribution
The right of external priority concerns only the filing of an application
Since the drafters rejected conditioning the right of priority on an
inventor’s contribution
• Attempting to link the two is arguably contrary to the Convention
– Although not necessarily for internal priority
Applicants who have filed a US provisional application, or their successors
in title, are applicants for the whole application under US law
And they hold priority rights in the whole application under the Paris
Convention
• Regardless of their particular contribution to any inventive
concept in the application.
37
38. 4. Did US Law Require the Omission of Applicants in a
PCT Application if They Did Not Contribute to the
Subject Matter Claimed?
US law does not restrict who may be named as an applicant in a PCT
application
The PCT Request Form allows identification of inventors, identification
of applicants, and identification of inventor/applicants either on a
country-by-country basis or for all designated states.
• Any US-specific requirements for identifying inventors in an
international application only apply to the US designation, and
only during US national phase
– US internal priority provisions that are specific to US
applications do not restrict PCT filing practices merely
because an applicant is located in the US
• US law provides no basis for omitting as applicants in the PCT
application individuals who do not qualify as inventors
38
39. Overview of Arguments
The EP had the right to require complete identity between applicants
Supported by the Paris Convention (Art. 4)
• Right of priority is an independent right linked to the act of filing
an application
• When an application claims a right of priority, the substantive
validity of the priority claim is subject to the law of the country in
which the application was filed
Supported by the PCT (Art. 8)
• Under PCT, the validity of a priority claim is determined by the
designated state in accordance with the Paris Convention
Supported by US law
• Distinguishes between internal and external priority
• Rejects extraterritorial application of US patent law
• Distinguishes between inventors (rights only in their inventive
concepts) and applicants (rights in the whole application)
39
40. Sonderwege?
The Paris Convention gives countries freedom
Is it a “Sonderweg” to take advantage of that freedom?
• Results in different requirements in different countries
– Is that too heavy a price to pay?
• Harmonization efforts have not focused on requirements for
claiming priority
– Should they?
G.H.C. Bodenhausen, Guide to the Application of the Paris Convention:
“All these common rules regarding the protection of industrial property
given in the Convention are of great importance. It should be noted,
nevertheless, that their scope is limited and they leave considerable
freedom to the member states to legislate on questions of industrial
property according to the interests or preferences.”
40
41. Outcome of the Opposition
Opposition hearing took place on 16-17 October 2018
On 17 October, the EPO revoked the CRISPR patent
Priority claim invalidated
• European law applies
• Patentee was not a valid successor in title
• Priority claim invalid since neither M nor R had assigned their
rights to claim priority
Broad has announced its intention to appeal to the EPO Technical Board
of Appeal
41
42. Lessons Learned – “Sonderwege” or Not
Procedure counts
Pay attention to chain of title
Seminal patent rights can be lost for what Broad has asserted was a
mere “technicality”
Remember that the Paris Convention gives countries considerable
leeway
When filing in Europe (and elsewhere)
Make sure that the applicants named in the application are the same as
the applicants named in the earlier application to which priority is
claimed, unless a valid succession of title has occurred during the
priority year.
• In a crunch, name everyone and sort it out later
42
43. Postscript
Droplets, Inc. v. E*Trade Bank (Fed. Cir. 19 April 2018)
A US case involving internal priority (domestic benefit)
• Issue was the requirement for validly claiming priority
Court held that a priority claim must specifically include the entire chain
of priority
• Complex file history
– The application leading to the patent at issue was filed in 2009
and claimed priority to a patent filed in November 2003, which
itself claimed priority to a 1999 provisional application via a
separate patent filed in June 200. The patent also claimed
priority directly to the provisional application
• Because the patent did not contain a reference to each prior-filed
application, the priority claim was invalid and the patent failed for
obviousness
As a matter of public policy, the burden is on the patentee to show a
clear, unbroken chain of priority
43