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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.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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assignment of right to claim priority

America's leading patent law source

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.

assignment of 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.

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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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Assignments overview and pitfalls to beware!

03 December 2012

Ian Starr

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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Assignments: Best Practice Tips

By Stephen P. Scuderi

The timing and sufficiency of an assignment document can become critical for protecting the rights of the assignee. These rights include the assignee’s right to sue for infringement, ownership right and right to claim priority.

Right to Sue for Infringement

In the recent case of Diamond Coating v. Hyundai, 823 F. 3d 615 (Fed. Cir. 2016), the court made it clear that anything less than a transfer of the “entire exclusive patent right” runs the risk of the assignee not obtaining “patentee status” and therefore not having standing to sue for infringement under 35 U.S. Code § 281. If less than the entire exclusive right is transferred, than the courts must analyze the agreement to determine if the assignee has obtained all “substantial” rights. If significant restrictions are placed on those rights, than the agreement will be deemed a license and the assignee will not have standing to sue for infringement.

Right of Ownership

Under U.S. law, a patent or patent application “shall be assignable in law by an instrument in writing” (35 U.S. Code § 261). In the U.S., an assignment that is signed by only the assignor is considered a valid assignment.

This is in contrast to Europe, wherein an assignment of a patent must be in writing and “shall require the signature of the parties to the contract” (Article 72 European Patent Convention (EPC)). “Parties” in this case means the assignor and the assignee. Therefore an assignment signed only by the inventor may not be considered valid in some European countries.

Fortunately, validity of an assignment is governed by the laws of the country where the assignment is executed. Therefore, if an assignment is executed and valid in the U.S., it will also be accepted by the European Patent Office. However, for companies with inventors in multiple countries, care must be taken as to the legal requirements for a valid transfer of ownership in the country where the assignment is executed.

Right to Claim Priority

The right to claim priority in a European or PCT patent application is governed by Article 87 EPC, which states that “any person — or his successor in title, shall enjoy — a right of priority during a period of twelve months from the date of filing of the first application.” Therefore, for an Applicant of a European or PCT application to claim priority to priority application, that Applicant:

  • must be the identical legal person (or persons) who filed the earlier application, or
  • must be a successor in title, and
  • must claim the right within 12 months of the filing date of the priority application.

Recent European decisions have provided fact specific details in determining if the above conditions have been met. Firstly, in Edwards v. Cook, [2009] EWHC 104 (Pat), the English court ruled that the Applicant in this case was not a successor in title and did not have the right to claim priority at the time of filing a PCT application.

More specifically in Edwards v. Cook, a U.S. provisional patent application named three inventors (i.e., Obermiller, Osse and Thorpe) as applicants. Subsequently, a PCT application was filed claiming priority to the U.S. application, but named only Cook Biotech Inc. (Cook) as the Applicant. Obermiller was an employee of Cook and had assigned his right in the invention to Cook prior to the PCT filing date. However, Osse and Thorpe were not employees of Cook and only assigned their rights to Cook after the PCT filing date. The English court found that Cook did not have the right to claim priority because:

  • at the time of asserting the priority claim, Cook alone was not the exact legal person who filled the priority application,
  • nor was Cook a successor in title, and
  • the subsequent assignments did not restore the priority right.

However, in KCI v Smith, [2010] EWHC 1487 (Pat), the English court ruled that the Applicant in the case was a successor in title based on the wording of an employment agreement. In that case the sole inventor of a U.S. provisional patent application was an employee of KCI. The inventor had signed a “confidentiality agreement” as a condition of employment with KCI. A PCT application was filed naming KCI as the Applicant and not the inventor. The main issue was whether or not the employment agreement was legally effective in making KCI the successor in title.

The court found that the pertinent part of the employment agreement read as follows:

  • “in consideration of employment with KCI Inc. —“
  • “I hereby assign and agree to assign to the Company all right, title and interest in all confidential information, inventions — ”

The court concluded that the agreement was effective to assign legal title to KCI and, therefore, KCI had the right to claim priority.

It is important to note that the court’s ruling is fact specific and the KCI case was based on an employment agreement that was an actual assignment, wherein the inventor stated: “I hereby — assign and agree to assign.” The court did not indicate how it would have ruled if the employment agreement was watered down to be closer to that of an obligation to assign. For example, if the employment agreement had merely stated that the inventor did “agree to assign,” it is not clear if the court’s ruling would have been the same.

Best Practice Tips

Based on the above, some recommended best practice tips would be:

  • Assignment should be made for the “entire right, title and interest” in the invention.
  • Both assignee and assignor should execute the assignment.
  • If possible, ensure that employment agreements include sufficient language to be considered an assignment, e.g., “I hereby — assign and agree to assign”, similar to that of the KCI case.
  • Ensure that all assignments for a priority application are executed before filing a priority claiming application (e.g., a European or PCT application).
  • If there is any doubt as to the Applicant’s right to claim priority, then add the “person” who filed the original priority application as an additional Applicant to preserve the priority right. Corrections to the assignments and/or ownership rights can be made later.

Assigned or not assigned? - the tricky issue of priority right transfer (T 0725/14)

"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." 

assignment of right to claim priority

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assignment of right to claim priority

There was an interesting argument during the hearing about the relevent law which should apply for substantive matters (eg interpretation of the document under the "Haviltex" principle, and the rules of evidence. Thus, both parties accepted that Dutch law should govern the interpretation of the assignment agreement. There was a dispute about how "Haviltex" should apply, but both parties took the view that Dutch law was determinative on whether/how Haviltex should apply, and filed evidence from Dutch attorneys. HOWEVER, the Opponent also argued that EVEN IF under Dutch law the intention of the parties was determinative, such intention needs to be properly evidenced, and the EPO rules for adducing and evaluation evidence should apply. Thus, when a tribunal applies foreign law, it nevertheless always uses its own rules of evidence to determine the facts so that it can apply the law. The EPO rules of evidence say that when all relevant information is under the control of one party (as was the case here) that party must prove its case "up to the hilt". That was the approach the Board seemed to follow, deciding in the end that the did not need to worry about the correct interpretation of Haviltex under Dutch law, on the basis that even if the Patentee was right on that legal point, it should still lose due to the lack of evidence to show the intentino of the parties. A really interesting case.

You write that the Boards are showing no sign of "leniency" on priority. Leniency is not the right word. Let us distinguish between the Paris Convention notion of "same invention" and Paris's "successor in title". No leniency on "same invention" please. The Gold Standard is correct. Now, as to the "successor in title" issue, EPO insiders contend that it is the EPO's duty to police the issue with full rigor but that strikes me as misconceived and out of line with its attitude on ownership issues between Applicant and named inventor, in cases where there is no priority issue in play. The EPC has provisions to adjudicate cases of ownership disputes between two rivals for the status of owner. I do not see why the EPO cannot treat the "successor in title" priority issue consistently with all other non-priority ownership issues that have arisen over the last 40 years. It's a matter between the rival owners. Letting soup-stirring, mischief-making, cost-leveraging 3rd party Opponents make hay with the issue degrades the underlying principles of the EPC and, as the article suggests, imposes disproportionate penalties on deserving inventors and Applicants. Normally, I'm in favour of standards that foster more professional work by patent attorneys. The law should favour those who invest in top class patent drafting skills. But insisting that when ownership rights are transferred, and there is no dispute about ownership, every i be dotted and every t be crossed before filing PCT strikes me as excessively pernickety, anti-patent, unworldly, disproportionate and unreasonable.

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assignment of right to claim priority

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

assignment of right to claim priority

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. 

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assignment of right to claim priority

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Getting priority right – a summary.

The ability of a party filing a patent application to “claim priority” from the filing of an earlier application is enshrined in Article 4 of the Paris Convention of 1883. At first sight it appears a simple matter for the applicant for the original application, or their successor in title, to claim the benefit of the earlier filing date for the same invention. However, over the years a number of questions have arisen as to the conditions which must be fulfilled for the priority claim to be validly made. In light of the recent high-profile European Board of Appeal hearing involving priority issues in a CRISPR gene editing case (T 844/18), which members of our team attended as observers, we provide some practical suggestions of how to avoid potential problems. 

Introduction

Intact priority claims are often of vital importance to patent validity in jurisdictions without a prior art grace period. An invalid priority claim often equates to an invalid patent due to an intervening publication of relevant prior art, be it by third parties or by the applicant themselves.

For a claim to priority to be valid, the priority-claiming application must be filed by the “same applicant” or the successor in title as the applicant of the original priority application. The recent decision T 844/18 has reinforced how the term “same applicant” is interpreted by the European Patent Office (EPO). Although the full written decision is not yet available, the case emphasises that, where a priority application is filed by a plurality of applicants (“co-applicants”), for the applicant of the subsequent priority-claiming application to be considered the “same applicant”, all co-applicants (or their successor(s) in title) must be included. This means that for any subsequent priority-claiming application, applicants can be added, but not removed, unless their share of the priority right is validly transferred to one of the other parties continuing as an applicant.

This serves as a timely reminder to applicants and their advisers to examine carefully the question of which party holds the right to priority, prior to the filing of any subsequent priority-claiming applications.

It is also important to remember that, if the subject matter is broadened when filing the priority-claiming application, compared to the disclosure of the priority application, a claim may be entitled to different priority dates for the different subject matter. Ideally, such broadening should be avoided, or handled carefully if it is unavoidable.

Current best practice when drafting and filing

Most priority issues can be avoided easily by following good practice at the drafting and filing stages. Our main recommendations are as follows:

  • Always file a later priority-claiming application in the same party name(s) as the priority application, or ensure that an assignment document is executed prior to filing the later application in the name of the assignee.
  • If the priority application was filed jointly in the name of more than one party, file the later priority-claiming application naming all of those parties, or ensure that an assignment document is executed prior to filing, to transfer the priority right to at least one of the other co-applicants.
  • Any assignment should be executed by assignor and assignee and explicitly mention assignment of the right to claim priority.
  • Where a person signs on behalf of a company, take care to ensure they have the necessary authority.
  • If it is necessary to broaden or change the definition of the invention as claimed in the priority-claiming application, compared to the priority application, do so carefully. If possible, the scope of the priority-claiming application should be altered in a way that finds basis in the disclosure of the priority application.
  • If the priority application does not provide the required basis for alterations, and particularly if the scope of the definition of the invention is to be broadened, text should be included in the specification which explicitly delineates the subject matter which was disclosed in the priority application from the subject matter which is covered by the broader definition. Unless changes are unavoidable, the original text of the priority application should be retained and added to, rather than altered or deleted.
  • If a claim in the priority-claiming application is to be broadened in scope, as compared to the priority application, use of a generic definition covering original and added subject matter is acceptable, but it is advisable to include in the text a definition of the generic term which explicitly delineates, as clearly defined alternative subject matters, the original and the added matter. For example, if a range is broadened from “3-5” to the range “1-8”, include a definition that this means “1-2 or 3-5 or 6-8”.

If you are preparing revisions to a specification prior to claiming priority, at Greaves Brewster we are always happy to advise on the suitability, under European practice, of the changes to be made. We can also make suggestions as to the most appropriate practice in order to mitigate the likelihood of challenges to the validity of the priority claim in Europe.

Recognising priority problems in existing filings and finding solutions

There are two main ways in which a claim to priority can be found invalid, according to case law developed over the last few years at the European Patent Office (EPO) and in the UK Courts.

  • The party named as applicant on the priority-claiming application is not entitled to the right to claim priority from the original priority application

How does this arise?

The party which is the applicant for the later application may believe that it is the effective owner of the priority application and the associated right to claim priority from it, for example if it is the employer of an inventor who was the applicant for the priority application, or if the invention has been made under some other contract. That is, the party considers itself to be the “successor in title” of the inventor.

However, legal title may not have been transferred unless an assignment document has been completed before the priority-claiming application has been filed. Such a failure to transfer the legal title with an assignment, pre-dating the later application, can lead to a loss of priority. This cannot be avoided by a subsequent completion of an assignment document including a statement that the assignment has retroactive effect.

An alternative possibility is a co-applicant of a priority application believing that as one of the applicants of the priority application, they are entitled to file subsequent priority-claiming applications without the other co-applicants. For example, a priority application may have been filed by co-applicants A and B. Yet the subsequent priority-claiming application was filed by co-applicant B alone. This situation may arise in the USA, where a priority application and subsequent application need only have one overlapping inventor in common (inventors often being named as co-applicants).

However, under the European Patent Convention, all co-applicants of a priority application must be named on the subsequent priority-claiming application for the priority to be claimed validly. The only exception to this is when the right (and associated right to claim priority from) to the priority application is transferred to the remaining co-applicants, or to another party named as an applicant. Again, any necessary assignment document must have been completed before the priority-claiming application is been filed.

An assignment document was not completed before filing – what can be done?

Depending on the law which applies to the relationship between the priority applicant and the later applicant, it may be that the equitable right to claim priority was transferred in time. If this is the case, it may be sufficient to rely on this. The notion of equity does not exist under all legal systems, however, so this approach may not be effective for all countries.

If legal title has not been transferred but the transfer may have occurred in equity, care should still be taken as to which party name to use when filing the priority-claiming application. If a party holding the legal title makes a claim to priority when the equitable title has been transferred away from them, the claim may be invalid.

If neither legal nor equitable title has been transferred to the party which claimed priority, for applications pending at the EPO it may be possible to request a correction of the applicant to the party which filed the priority application. This can be successful in restoring the effectiveness of the priority claim, but can only be done before grant. At Greaves Brewster, we have successfully acted for a number of clients to arrange such corrections, though we would caution that this should not be relied upon, as EPO practice may change in this area.

If you are concerned that there may be a problem with the entitlement to claim priority, please consult one of us at Greaves Brewster. We can propose the best course of action, on the basis of the particular facts of the case.

  • The invention claimed in the priority-claiming application is not the “same invention” as the invention disclosed in the priority application

A later application may claim priority from an earlier application if it relates to the “same invention” as that earlier application. Under EPO case law, the “same invention” is the subject-matter which a skilled person might directly and unambiguously derive from the disclosure of the priority application. At least very strong implicit, ideally literal, basis for a claimed combination of features is required in the priority document in order for a priority claim to be valid for that combination.

If the definition of the invention is altered in the text of the priority claiming application, compared to the text of the priority application, this may lead to a loss of entitlement to priority in the following situations:

  • The priority application disclosed feature A but the later application claims “A and B”. Since the combination “A and B” was not disclosed in the priority application, the claim in the later application is not entitled to claim priority.
  • The priority application disclosed feature “A” but the later application claims “A or B”. In this case, the part of the claim covering “A” is entitled to claim priority, whilst the part of the claim covering “B” is not, instead taking the filing date of the later application as its priority date. The claim has more than one priority date.

There are some situations where an “OR” claim is not presented as including explicit alternatives, but rather covers broader alternatives in a generic fashion. For example, this might be achieved by broadening a claimed range, or by broadening the definition of a class of chemical compounds. Such a so-called “generic ‘OR’ claim” is also capable of having multiple priority dates, provided that the generic term gives rise to the claiming of a limited number of clearly defined alternative subject-matters.

It looks like a pending claim may not be entitled to priority – what can be done?

Available options to restore priority to a pending claim depend on the content of the priority document and the priority-claiming application as filed. In some cases amendments can be made such that the claim finds basis in the priority document in its entirety. In other situations, a small amendment may transform a claim from being an AND claim (see (i) above) into an OR claim (see (ii) above), such that it is at least partly entitled to priority. Even partial entitlement to priority can make all the difference to which prior art becomes relevant.

Often the approach to amending such claims has to balance commercial requirements, prior art issues and priority considerations. Of course, in some circumstances, it may be the preferred option to accept a loss of priority. However, such a loss of priority should be a conscious decision, such that vulnerabilities in validity are managed as well as possible and do not come as a surprise post-grant.

Once again, if you are concerned that there may be a problem with the entitlement to claim priority, please consult one of us at Greaves Brewster. We can propose the best course of action, on the basis of the particular facts of the case.

This update is for general information and does not constitute legal advice. If you have any questions regarding the issues discussed in this update, please contact your usual Greaves Brewster attorney, or Rhiannon Turner .

Sources of case law

The party claiming priority

Relevant EPO cases

T62/05 – deciding that a formal assignment document is required for the right to claim priority to be transferred. ( https://www.epo.org/law-practice/case-law-appeals/pdf/t050062eu1.pdf )

T517/14 and T205/14 – deciding that the right to claim priority may have been transferred in equity (according to the law determining the relationship between the parties), even if the ownership of the priority application has not been transferred ( https://www.epo.org/law-practice/case-law-appeals/pdf/t140517eu1.pdf and https://www.epo.org/law-practice/case-law-appeals/pdf/t140205eu1.pdf )

J19/87 – the equitable title of the priority right may have been transferred, according to the evidence of the intention of the parties, even though the formal legal title had not. ( https://www.epo.org/law-practice/case-law-appeals/pdf/j870019eu1.pdf )

T577/11 – for priority to be claimed validly, the transfer of title must have been completed before the priority-claiming application is filed. A subsequent assignment, stating that the assignment has retroactive effect, does not provide the required transfer. ( http://www.epo.org/law-practice/case-law-appeals/pdf/t110577eu1.pdf)

T844/18 – in circumstances where a priority application is filed by a number of co-applicants, for priority to be validly claimed by a subsequent priority-claiming application, all of the co-applicants must be named, or valid transfers to the continuing applicants executed prior to filing. ( https://www.epo.org/law-practice/case-law-appeals/communications/2020/20200117.html and https://www.greavesbrewster.co.uk/breaking-news-european-priority-law-maintained-at-epo-board-of-appeal-crispr-hearing/ )

Relevant UK Court cases

Edwards Life Sciences AG v Cook Biotech Inc.– the applicant had no contractual relationship with one of the priority applicants and the right to claim priority was not assigned before priority was claimed. ( http://www.bailii.org/ew/cases/EWHC/Patents/2009/1304.html )

KCI Licensing Inc v Smith and Nephew plc – the right to claim priority had been transferred, both legally and in equity, by a confidentiality agreement between the inventor and KCI, completed between the filing of the priority application and of the subsequent application claiming priority. ( http://www.bailii.org/ew/cases/EWHC/Patents/2010/1487.html )

Idenix Pharmaceuticals Inc v Gilead Sciences Inc. –  the wording of agreements between the parties was effective to transfer the legal title to the invention and associated right to claim priority. Even if legal title had not been transferred, due to the intention of the parties equitable title had been transferred. This would have been sufficient for the priority claim to be valid. ( https://www.bailii.org/ew/cases/EWCA/Civ/2016/1089.html )

Fujifilm & Others v Abbvie –provided equitable interest in the title of the priority right has been transferred, according to the evidence available, it does not matter if legal title has not also been transferred. If equitable interest has been transferred, a priority claim by the party holding the formal legal title may be invalid. ( https://www.bailii.org/ew/cases/EWHC/Patents/2017/395.html )

The subject matter to be claimed

G2/98 – defining the meaning of “the same invention” for the purposes of claiming priority. ( https://www.epo.org/law-practice/case-law-appeals/pdf/g980002ex1.pdf )

G1/15 – setting out the question to be answered when determining whether or not a claim is entitled to the priority date and the meaning of “clearly defined alternative subject-matters”. ( https://www.epo.org/law-practice/case-law-appeals/pdf/g150001ex1.pdf )

T 557/13 – the Board of Appeal which provided the referral to the Enlarged Board of Appeal in G1/15; contains a detailed analysis of preceding conflicting case law. ( https://www.epo.org/law-practice/case-law-appeals/pdf/t130557ex1.pdf )

T1519/15 – the Board of Appeal applied G1/15 to decide that the absence of a feature in a claim of a subsequent application, when the claim of the priority application contained the feature, can be seen as a broadening of scope to which partial priority can be applied, so that different subject matter covered by claim 1 had different priority dates. ( https://www.epo.org/law-practice/case-law-appeals/pdf/t151519eu1.pdf )

Nestec S.A., Nestlé Nespresso S.A. et al . v. Dualit et al . – conclusion that the use of a generic definition in a claim meant that there was no “clearly defined alternative subject matter”, so it was not possible to allocate different priority dates to different parts of the claim. Therefore, the whole claim was not entitled to the priority date. ( https://www.bailii.org/ew/cases/EWHC/Patents/2013/923.html )

Nicocigs v. Fontem Holdings & Fontem Ventures – it was found that, for priority to be claimed, the priority disclosure must support the claim across the whole breadth; because this was not the case, the claim was not entitled to claim priority. ( https://www.bailii.org/ew/cases/EWHC/Patents/2016/2161.html )

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Getting priority claims right - an EPO/European perspective

The whole issue of claiming priority on patent applications came to a head at the European Patent Office (EPO) on 16 January 2020 when the Board of Appeal in case T 0844/18 dismissed an appeal by the Broad Institute on its CRISPR patent EP2771468 and upheld an Opposition Division’s decision to revoke the patent for lack of novelty as a result of an invalid priority claim. Yes, that's right, an invalid priority claim .

This is not the first time that this kind of situation has arisen, and it will certainly not be the last.

Priority is one of those issues which can easily go wrong, particularly where there are multiple parties working together. However, when it does go wrong and a priority claim is found to be invalid, granted patents can often be revoked.

So what went wrong in this case - why was the priority claim invalid? And what should you do to ensure that the same thing doesn't happen to one of your cases?

First things first - nothing has changed at the EPO

It's worth noting that this decision did not set a new precedent or create a new requirement for claiming priority at the EPO. The finding that the priority claim was invalid is wholly consistent with existing EPO case law.

So what happened in the Broad Institute case?

The written decision has not yet issued - it should issue within the next few months (when it does, it should be here ). However, the basic facts behind the case are as follows:

  • The PCT application had a total of 12 priority claims to earlier US provisional patent applications.
  • The US provisionals named various applicant-inventors.
  • When it came to the filing of PCT/US2013/74819 (which then matured into EP2771468), various of the applicant-inventors from the US provisionals were not named as applicants on the PCT application, and there was no assignment of rights from them to the applicants who were named on the PCT application.

Because of this, various of the priority claims were invalid. Without those priority claims (specifically, without the earliest priority claim), the available prior art caused a lack of novelty.

Understanding priority - a brief 101

The "right of priority"

Article 4(A)(1) of the Paris Convention states that:

"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 EPC gives effect to this at the EPO; Article 8 of the PCT gives effect to this for PCT applications; Section 5 of the Patents Act 1977 gives effect to this in the UK.

This right of priority is a property right and is created by the filing of a patent application. It is distinct from the right to be granted a patent (Edwards Lifesciences AG v Cook Biotech Incorporated [2009] EWHC 1304 (Pat) at [82]-[98]).

Ownership of the right of priority and claiming priority

Where there are multiple applicants for an application, the priority right belongs to them simultaneously and jointly (they are a "legal unity"). This means that all of them (or their successor(s) in title) must be amongst the applicants for a subsequent patent application claiming priority from the earlier application ( T 0788/05 at Reasons 2). Applicants can, however, be added to the subsequent patent application without invalidating the priority claim ( T 1933/12 at Reasons 2.4).

Title cannot be fixed retrospectively

If all of the applicants for the earlier application (or their successors in title) are not amongst the applicants for the subsequent patent application then the priority claim is invalid, and this cannot be remedied after filing of the subsequent patent application (Edwards v Cook at [95], J 0019/87 , T 0062/05 ).

Successor(s) in title and equitable/beneficial title v bare legal title

If legal title to the right of priority is not with the applicant(s) of a later application, all might not be lost. The key thing here is "successor in title", and this is resolved under the relevant national law, i.e. the national law under which the transfer is effected. As is stated by Arnold, J in KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [2010] EWHC 1487 (Pat) at [71]:

"Article 4(A) of the Paris Convention and Article 87(1) of the EPC are provisions in international treaties whose operation cannot depend upon the distinction drawn by English law, but not most other laws, between legal and equitable title. 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."

See also Idenix Pharmaceuticals Inc v Gilead Sciences Inc & Ors [2016] EWCA Civ 1089 at [265]-[266]; Accord Healthcare Ltd v Research Corporation Technologies, Inc (Rev 1) [2017] EWHC 2711 (Pat) at [53]-[78]; T 0205/14 ; J 0019/87 ; T 0517/14 ; T 1201/14 ; T 0725/14 ).

Overall Summary

The legal principles applicable to priority entitlement are summarised by Birss, J in Accord v Research at [75] where he states that:

"i)           Usually the right to claim priority goes with the right to the invention.  [...]

ii)             The right to claim priority must be with the person making the patent application in which that right is claimed when they make that claim, i.e. when the application is filed. A later acquisition of that right cannot make good a lack of it on the relevant date.  If the right was not in place at the time then the right is lost for all time.  That is Edwards v Cook.

iii)           But if the local law applicable to rights of the applicant and the patent application at the place and time when it was made allows for a splitting of property rights into legal and equitable interests, then it will be sufficient to establish an entitlement to priority if the applicant holds the entire equitable interest at the relevant date.  That is KCI, HTC and FujiFilm and was held in the Court of Appeal in Idenix provisionally to be correct.

iv)             A person with a legally enforceable right to call for the assignment of the legal title to a piece of property such as an invention (or a right to claim priority) has the equitable title to that property. When the cases refer to the applicant holding the substantive right and title to the invention, they are referring to this legal/equitable distinction."

Practical advice

The Broad Institute's CRISPR case emphasises the stark contrast between the interpretation of the provisions of Article 4(A)(1) of the Paris Convention under different legal systems. For example, under US law (35 U.S.C. 120 and 119(e) - see e.g. MPEP S.211 ), the priority claims would have been valid since other applicant-inventors on the relevant earlier applications had assigned their rights to the applicants named on the PCT application.

Our recommendations for filing a later patent application (e.g. a PCT application) are as follows:

A.             Ensure that you have a complete chain of title from each applicant on each priority application to the applicant(s) on the later (e.g. PCT) application. Where appropriate (e.g. common law countries such as the USA), determine, follow and obtain executed assignments for each step in the equitable chain of title, not just the bare legal title. Do not take shortcuts when establishing the chain of title - proving validity in 10 or 20 years time could be difficult (Accord v Research).

B.             Assignments must be in writing, and must be signed by all parties ( T 0062/05 ). Ensure that the assignment(s) are dated before the date of filing of the later application.

C.             Ensure that the assignment(s) clearly identify the priority application(s) - filing country, application number, filing date, and that they explicitly state that both (i) the right to claim priority, and (ii) the right to grant of a patent, are being assigned.

D.             If you cannot get assignments (e.g. from inventors) executed before the date of filing of the later application (e.g. a PCT application) then include them as applicants on the later application - assignments can be subsequently executed and recorded.

Jim Robertson, Patent Attorney

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Practical Tips for Avoiding the CRISPR Priority Pitfall in Europe

By Catherine Williamson, Senior Associate

The first European patent to be granted in relation to CRISPR technology (EP2771468) has recently been revoked after high-profile opposition and appeal proceedings.

The reason for the revocation was that the Opposition Division and Board of Appeal considered the priority claim to be invalid because the US provisional application from which priority was claimed named more applicants than the subsequent PCT application from which the European application was derived, and the applicant not named on the subsequent PCT application had not transferred his rights to any of the PCT applicants prior to the PCT application filing date. Consequently, prior art that was published between the priority date and the PCT filing date could be cited against the claims and was found to be novelty destroying.

Although the decisions from the Opposition Division and Board of Appeal were in accordance with years of case law and numerous national courts in Europe, the high-profile nature of the CRISPR case has highlighted this issue once again and reminded applicants of the importance of ensuring that documentation proving chain of title is in place before a priority-claiming application is filed.

The Law on Entitlement to Claim Priority in Europe

Article 87(1) EPC states (emphasis added) that “ 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.”

Thus, where the priority-founding and priority-claiming applications have been filed with different applicants, one or more of the applicants of the priority-claiming application must be the “successor in title” to the applicants of the priority-founding application. Importantly, the right to claim priority must have been transferred from all of the applicants of the priority-founding application that are not named as applicants of the priority-claiming application.

EPO case law and numerous national courts in Europe (including Germany and England & Wales) have ruled that the applicant(s) of the priority-claiming application must have been the successor(s) in title to the applicant(s) of the priority-founding application at the time of filing the priority-claiming application . The applicant(s) of the priority-claiming application must have the right to claim priority, but do not need to have ownership of the entire priority-founding application. National law may be applied to establish whether or not a transfer of the right to claim priority has actually taken place (e.g. by virtue of assignment).

Problems in relation to this requirement most frequently arise where one or more inventors have been named as applicant(s) of a priority-founding application filed in the USA, but a company (e.g. the inventor’s employer) is named as applicant for the subsequent priority-claiming application (and paperwork proving that succession in title took place before the filing date of the priority-claiming application is not in place). Indeed, this was the case for the recently revoked CRISPR case. However, this issue could arise in any case where one or more of the applicants of a priority-founding application is not named as applicant of the priority-claiming application.

Practice Points

The following practice points may therefore be useful to consider before filing a priority-claiming application that names different applicants to the priority-founding application.

  • Establish whether paperwork is in place to prove any succession in title before the priority-claiming application (e.g. a PCT application) is filed.
  • Ensure that the succession in title from all the applicants of the priority-founding application(s) is considered.
  • Assignment documents executed before the filing date of the priority-claiming application are likely to be sufficient.
  • If assignment documents are not available, other documentation available to prove the succession in title occurred before the filing date of the priority-claiming application could be used. For example, an employment agreement specifying that all inventions made by the employee are automatically transferred to the applicant of the priority-claiming application may be sufficient, providing that the automatic transfer is valid under the national law governing the employment agreement, and providing that the employment agreement was in place when the invention was made. Other types of agreement may also be sufficient depending on the terms.
  • However, check that the wording in any other documentation is clear. It may be preferable to have confirmatory assignment documents in place for added certainty.
  • Note that retroactive assignments dated after the filing date of the priority-claiming application are likely not sufficient under EPO law, even if they would be valid under the national law governing the assignment.
  • Similarly, an obligation to assign is likely not sufficient under EPO law since the transfer must have actually taken place before the filing date of the priority-claiming application.
  • Check that any paperwork relied on is robust since it may be scrutinized in detail in opposition or revocation proceedings post-grant. For example, are the application numbers mentioned in the document correct? Are the identities of the parties involved clear? Did all parties sign the document?
  • If there is any doubt about whether the correct paperwork is in place, all applicants of the priority-founding application could be named as applicants of the priority-claiming application. Where there is only doubt in relation to some of the applicants of the priority-founding application, only those applicants could be named as applicants of the priority-claiming application. This may be in addition to any successor(s) in title to other applicants for which the correct documentation is in place. An assignment can then be recorded at a later date.

A US provisional application was filed naming Inventor A, Inventor B, Inventor C and Inventor D as applicants. The client wishes to file a PCT application claiming priority to the US provisional application and naming Company A as applicant.

Inventor A was a consultant to Company A. An assignment between Inventor A and Company A was executed before the PCT application was filed.

Inventor B was an employee of Company A. Inventor B’s employment agreement (which was in place before the invention was made) specified that all inventions made by Inventor B would automatically be transferred to Company A upon creation. This automatic transfer is valid under the national law governing Inventor B’s employment agreement.

Inventor C was an employee of Company B, which is part of the same group as Company A. Inventor C’s employment agreement (which was in place before the invention was made) specified that all inventions made by Inventor B would automatically be transferred to Company B upon creation. This automatic transfer is valid under the national law governing Inventor B’s employment agreement.

No paperwork at all is available for Inventor D.

Inventor A’s assignment and Inventor B’s employment agreement would likely be sufficient to show that Company A is successor in title to Inventors A and B. However, it would be preferable to also have a confirmatory assignment from Inventor B to Company A in place for added certainty.

However, Inventor C’s employment agreement would not be sufficient on its own to show that Company A is successor in title to Inventor C. Before the PCT application is filed, further documentation should be obtained showing that the right to claim priority was transferred from Company B to Company A (e.g. an assignment agreement). It would also be preferable to have a confirmatory assignment from Inventor C to Company B in place for added certainty.

If it is not possible to obtain the necessary documentation in relation to Inventors C and D before the priority deadline, the PCT application could be filed naming Company A, Company B and Inventor D as applicants. Assignments from Company B to Company A, and from Inventor D to Company A, could then be recorded at a later date.

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

assignment of right to claim priority

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

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1. The right to priority

1.3 validly claiming priority .

For a valid claim to priority, the following conditions must be satisfied:

(i) the previous application was filed in or for a state or WTO member recognised as giving rise to a priority right in accordance with the provisions of the EPC (see also A‑III, 6.2 );

(ii) the applicant for the European patent was the applicant, or is the successor in title to the applicant, who made the previous application (see also A‑III, 6.1 and, for transfer of partial priority, F‑VI, 1.5 );

(iii) the European application is made during a period of twelve months from the date of filing of the previous application (subject to certain exceptions, see  A‑III, 6.6 ); and

(iv) the European application is in respect of the same invention as the invention disclosed in the previous application, which must be the "first application" (see  F‑VI, 1.4  and  F ‑VI,  1.4.1 ).

Art. 87(1) , (2) and Art. 87 (5)

The words "in or for" any member state of the Paris Convention or member of the WTO, referred to in A‑III, 6.2 , mean that priority may be claimed in respect of a previous national application, a previous European application, a previous application filed under another regional patent treaty or a previous PCT application. If the previous application was filed in or for an EPC contracting state, this state may also be designated in the European application. The previous application may be for a patent or for the registration of a utility model or for a utility certificate. However, a priority right based on the deposit of an industrial design is not recognised (see  J 15/80 ). So long as the contents of the application were sufficient to establish a filing date, it can be used to create a priority date, no matter what the outcome of the application may be; for example, it may subsequently be abandoned or refused (see  A‑III, 6.2 ).

Art. 87(2) and Art. 87 (3)

The expression "the same invention" in Art. 87(1) means that the subject-matter of a claim in a European application may enjoy the priority of a previous application 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. This means that the specific combination of features present in the claim must at least implicitly be disclosed in the previous application (see  F‑VI, 2.2 and G 2/98 ).

IMAGES

  1. ASSIGNMENT (of a Claim for Damages)

    assignment of right to claim priority

  2. New Mexico Notice of Right to Claim Lien by Corporation or LLC

    assignment of right to claim priority

  3. Claim Assignment Agreement Template

    assignment of right to claim priority

  4. Claim Assignment Agreement Template

    assignment of right to claim priority

  5. Assignment of Claim for Damages

    assignment of right to claim priority

  6. Types of Priority.docx

    assignment of right to claim priority

VIDEO

  1. Priority 👩🏾‍⚕️📚🩺

  2. Unit 5 Assignment LIfe cycle of claim pptx

  3. volume claim increase literature brain assignment membership

  4. Fast-track your VA claim with priority review! #vabenefits

COMMENTS

  1. IP Law Bulletin

    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.

  2. Don't break the chain

    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.

  3. Claiming Priority at the EPO

    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.

  4. The transfer of priority rights

    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).

  5. Deadly pitfalls and lessons learned

    It is essential to know the EPO's strict requirements for validly assigning the priority right. Within 12 months of filing a first patent application, the applicant or its successor in title...

  6. D Young & Co

    Priority right - prove it or lose it 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.

  7. D Young & Co

    An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor.

  8. Guidelines for Transferring Priority Rights

    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.

  9. Assignments: Best Practice Tips

    The right to claim priority in a European or PCT patent application is governed by Article 87 EPC, which states that "any person — or his successor in title, shall enjoy — a right of priority during a period of twelve months from the date of filing of the first application."

  10. PDF Transfer of Priority Rights Paris Convention Article 4a(1)

    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)

  11. PRIORITY

    The safest route is for an inventor to complete an explicit assignment of the right to claim priority before the PCT application is filed (of course, such an assignment should only transfer the right to claim priority for countries where it is desired that the assignee will be the future applicant). If an assignment can't be completed in time ...

  12. Priority Right Presumption at the EPO

    Previous case law from the Boards of Appeal at the EPO required that a party or parties claiming priority to a previously filed application when filing a European Patent Application must prove that the right to claim such priority was explicitly obtained prior to the filing date of the European Patent Application or its equivalent PCT.

  13. Assigned or not assigned?

    Particularly, when can the right to claim priority be said to have been assigned by an applicant to his successor in title? Assigned or not assigned? The patent at issue in T 0725/14 was granted to the Dutch company, Furanix. The patent (EP2105439) was derived from the EP application EP 09165171.1, based on a PCT application.

  14. On Assignments -- Securing Ownership and Priority Dates

    Here are some best practices for claiming ownership in IP and securing the right to claim priority. 1. Have Inventors, Consultants and Contractors Execute Agreements That Explicitly Assign ...

  15. Joint applicants and the right to claim patent priority in the EU

    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 ...

  16. PDF Guidelines for Transferring Priority Rights

    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-

  17. Getting Priority right

    Any assignment should be executed by assignor and assignee and explicitly mention assignment of the right to claim priority. Where a person signs on behalf of a company, take care to ensure they have the necessary authority. If it is necessary to broaden or change the definition of the invention as claimed in the priority-claiming application ...

  18. Getting Priority Claims Right

    ii) The right to claim priority must be with the person making the patent application in which that right is claimed when they make that claim, i.e. when the application is filed. A later acquisition of that right cannot make good a lack of it on the relevant date. If the right was not in place at the time then the right is lost for all time.

  19. Practical Tips for Avoiding the CRISPR Priority Pitfall in Europe

    Before the PCT application is filed, further documentation should be obtained showing that the right to claim priority was transferred from Company B to Company A (e.g. an assignment agreement). It would also be preferable to have a confirmatory assignment from Inventor C to Company B in place for added certainty.

  20. The Errors in the Assignment of the Right of Priority, or How to Lose a

    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.

  21. PDF Late-Executed Assignments in PCT Applications Can Impact Rights Across

    617.489.0002 [email protected]. By Rebecca M. McNeill, Amanda K. Murphy, and Blair Rinne. Some companies opt to postpone the execution of patent assignments until after applications are filed, so they can officially list the application number and filing date on the assignment. Other times, inventors and attorneys revising ...

  22. Assignments: Best Practice Tips

    Assignments: Best Practice Tips. Written by: Stephen P. Scuderi for the Daily Record. The timing and sufficiency of an assignment document can become critical for protecting the rights of the assignee. These rights include the assignee's right to sue for infringement, ownership right and right to claim priority. Right to Sue for Infringement.

  23. 1.3 Validly claiming priority

    For a valid claim to priority, the following conditions must be satisfied: (i)the previous application was filed in or for a state or WTO member recognised as giving rise to a priority right in accordance with the provisions of the EPC (see also A‑III, 6.2 );