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Ensuring Valid Priority Rights in Europe. Richard Johnson Member of the International Liaison Committee (Non-European). IN ASSOCIATION WITH. Ensuring Valid Priority Rights in Europe. What is the issue? Review of recent case law EPO United Kingdom France Germany

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Ensuring valid priority rights in europe

Ensuring Valid Priority Rights in Europe

Richard Johnson

Member of the International Liaison Committee

(Non-European)

IN ASSOCIATION WITH


Ensuring valid priority rights in europe1
Ensuring Valid Priority Rights in Europe

  • What is the issue?

  • Review of recent case law

    • EPO

    • United Kingdom

    • France

    • Germany

  • Practical considerations


What is the issue
What is the issue?

  • Priority claim validity is not a closed matter

    • Open to re-examination in validity action

  • Inconsistent approach to applicable law

    • Lex originis v Lex protectionis

  • Strict time frame for compliance

    • Deficiencies cannot be fixed later


Review of case law epo
Review of case law - EPO

  • T 62/05

  • Nihon GE Plastics K.K. → General Electric Company

  • High standard of proof for assignment

    • Analogy to application transfers (Article 72 EPC)

    • In writing, signed by both parties

  • No assignment document; no valid priority claim

  • Inconsistency with earlier case law (T 1008/96)

    • No account taken of applicable local law

    • Possible reference to Enlarged Board?


Review of case law epo1
Review of case law - EPO

  • T 788/05

  • “A person” & “first application”

  • Earlier case : Terumo & Tokin

    • Not “first application” for later priority claim by Terumo only

  • Priority right belongs “simultaneously and jointly” to joint applicants


Review of case law uk
Review of case law - UK

  • Edwards Lifesciences AG v Cook Biotech Inc.

  • Original applicants included non-employee inventors

  • Assignment done after PCT application filed

    • Too late!

  • Cook owned a share of the priority right

    • But not enough!


Review of case law uk1
Review of case law - UK

  • KCI Licensing Inc v Smith & Nephew plc

  • First application: inventor applicant

  • Subsequent application: employer applicant & subsidiary

  • General agreement assigning future inventions

    • Acceptable as transfer of priority right

  • Adding co-applicant for subsequent application

    • Right of priority shared through action of the parties


Review of case law france
Review of case law - France

  • Magic Technologies v Swisscom AG

  • First application: Swiss inventors

  • Subsequent application: Swiss employer company

  • Transfer document

    • Before filing of subsequent application

    • Transferred all rights “for the US”

  • No valid priority claim

    • Express mention of transfer of right of priority required

    • Despite transfer being effective under Swiss law


Review of case law germany
Review of case law - Germany

  • Bundespatentgericht decision 11 W (pat) 14/09

  • Right of priority can validly transfer before the formal transfer of the other rights to the invention

  • Transfer must occur before subsequent application is filed


Practical considerations
Practical considerations

  • Assess chain of title to right of priority before subsequent application is filed

  • If applicants are different, obtain a specific agreement

    • In writing

    • Expressly mentioning the right of priority

    • Signed by both parties

    • Executed at least one day before the subsequent application is filed


Practical considerations1
Practical considerations

  • If in doubt, and no agreement exists, name the same applicant

    • Deferring the addition of a priority claim until later probably no help


For more information please contact

For more information please contact:

Chartered Institute of Patent Attorneys

95 Chancery Lane, London WC2A 1DT

Telephone: +44 (0) 207 405 9450

Email: [email protected]

www.cipa.org.uk

Richard Johnson

MEWBURN ELLIS LLP

33 Gutter Lane, London EC2V 8AS

Telephone: +44 (0) 207 776 5300

Email: [email protected]

www.mewburn.com

IN ASSOCIATION WITH


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