Priority – Article 4A of the Paris Convention

(1) 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.

(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.

So, what does this mean? 

Article 4A(1) of the Paris convention states that “any person who has duly filed an application … in one of the countries of the Union, or his successor in title, shall enjoy  … a right of priority….”

So, the key portion in this part of the Article is that the person or his successor in title must have already filed (past tense) the application.  That means that the “title holder” of the parent application at the time that the child application is filed, has the right of priority.

Why is priority important?  Well, there are several reasons, but the two most important are:

1. An application can be filed in most countries of the world up to a year (for utility applications) after the filing date of the original (first) application. This allows an extra year for the owner of the patent to determine whether or not there is a market for the product outside of the U.S. (or whatever country the original application was filed in) and (usually) whether or not there is profit to be made in those other countries.
2. The priority date is the “effective filing date” for examination purposes in the other jurisdictions in which the application is later filed.  That is, when the application is examined, if there had been any publication of the invention between the time that the original application was filed and the filing date of the subsequent foreign application, that publication (art) should not be used as prior art against the subsequent application.

For example:

                Joseph Modeen invented a widget and filed a patent application in the US on September 15, 2009.  From September 15, 2009 to August 10, 2010, Mr. Modeen evaluated the overseas market and determined that he thinks that he can sell his widget overseas.

                In the meantime, a competitor of his, Susan Dillinger, published an article in the January 2010 issue of the “Journal of Widget.” This article discussed a widget that is almost exactly like Mr. Modeen’s widget.

                Mr. Modeen met with his patent attorney and they decided to file an International Patent Application on September 1, 2010, which would allow more time for the marketing research that is necessary to determine where overseas it would be profitable to sell his new widget.

                The International Application (filed under the Patent Cooperation Treaty) is examined, and Ms. Dillinger’s article is attached to the search report, along with other articles and publications.  As no response needs to be filed to the search report, nothing is done.

                When the time comes to enter the national stage of that PCT application (March 15, 2012), the application is filed in Canada, Mexico, Europe and Brazil.  The priority date for these national applications goes all the way back to the initial filing date of September 15, 2009.  Since the priority date is used as the effective filing date in the national offices, Ms. Dillinger’s article, which disclosed a widget that is almost identical to Mr. Modeen, should not be considered as “prior art” and therefore be a bar to the issue of a patent.

                However, if Mr. Modeen was employed by ABC Construction Company, and the company filed the initial patent application, until an assignment from the inventor (Mr. Modeen) to ABC Construction Company has been signed, the company would not have “title” to the application and would therefore not have the “priority right” to file any subsequent application.  (See my blog entitled “Assignments are more important now than ever.”) 

                If the International application had been filed in the name of ABC Construction Company without a signed assignment from Mr. Modeen, it would not have had the priority right and therefore, the effective filing date would revert to the filing date of the International application (September 1, 2010).  Since Ms. Dillinger’s article was published January of 2010, it could be held as prior art, which could have the result of being a bar to grant of the foreign applications.

                Bottom line:  be sure that you have signed assignments in place before you file any foreign applications.

THIS IS NOT LEGAL ADVICE.  Please see an attorney if you have legal questions related to this issue.