On June 9, 2010, the UK Court of Appeal successfully avoided ruling on a 2009 decision by the England and Wales High Court (Patent Court) confirming the decision of the Board of Appeals of the EPO in case No. T 0788/05[1] which held that priority can only be claimed by the identical applicant(s) of the relevant earlier application or his valid successor in title[2].

How does this affect us and what we do?  Well, if an EP application or its parent application is filed in the name of anyone other than the current, correct & official owner of all of the priority application(s), the priority date can be lost.  If a priority date is lost, then art that was published between the filing date of the priority application and the filing date of the PCT/EP application could be used to invalidate the EP patent.

Although this ruling is specific to the EPO, I wouldn’t be surprised if other countries (like the UK) also began enforcing this rule.  The definition of “priority” is almost always taken from Article 4A(1) of the Paris Convention[3], which is almost identical to the language in Article 87 EPC[4]. 

Article 4A(1) of the Paris Convention reads:

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.

The important words, in this context, are: “any person who has duly filed an application … or his successor in title….”  Note that “duly filed” is in the past tense, not the present tense.  That means that it must have already happened before “the periods hereinafter fixed.”   The specific language from the EPO ruling is:

… the priority right belongs … to the two applicants … unless one of them decides to transfer his right to the other applicant, who then becomes his successor in title and this before the filing of the later application.

We need to keep in mind the ramifications of this ruling and pay attention to the words “before the filing of the later application.”  For example, if a PCT application is filed in the name of Company A and the inventor signs an assignment of the priority document(s) to Company A after the PCT filing date, would that be the official “successor in title” before the filing date? 

What would be the interpretation of an assignment that clearly states that the inventor’s rights are transferred to Company A as of (or before) the filing date of the PCT application, but it was signed  after the PCT was filed?   What about a previously-signed employment agreement?  Would either of these be sufficient to transfer the priority right before the filing date of the PCT?  Those are both questions for an attorney, not me.  

Here is my solution to avoiding this problem:  once you know a patent application will be filed, determine if it is intended to be owned by anyone other than the inventors.  If it is, immediately prepare an assignment and have it signed (and preferably recorded) as soon as possible and long before any foreign applications are filed.  Even if it is a provisional application – it still needs to be assigned.

We should all develop a habit to identify the current official owner and title holder of each patent application that will be used as a priority application before any foreign application is filed.  If the intended Applicant of the foreign application is different than the title holder of the priority application(s), bring that to the attention of your attorney as the ramifications of filing foreign applications in name of the incorrect entity could be severe.

What happens if an assignment cannot be signed prior to the filing of the foreign application?  We all know that happens.  My work around would be to get an assignment signed as soon as possible, be sure that the inventor assigns the priority rights to the Applicant effective as of a date prior to the filing of the PCT application (so long as this is true, of course) and hope that it is never litigated.  And, of course, talk to your attorney about this.  There are other ways around this problem, but all are going to cost our clients a lot more money in the long run.  My belief is to get it right the first time around so that we don’t have to fix it later.  This work-around is only my suggestions and not legal advice.  As always, check with your attorney before you take any action.    

Have you run into this situation?  How did you handle it?  Please post your comments.  Thanks!

P.S.  Thank you to Harrison Goddard Foote for their timely paper on this issue.  See them at www.hgf.com .

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[1] A copy of the decision can be found at:  http://legal.european-patent-office.org/dg3/biblio/t050788eu1.htm.  See Page 12 for the ruling on this issue.

[2] For the full article see Harrison Goddard Foote’s paper at http://www.hgf.com/uploads/Harshness%20of%20UK%20Law%20on%20Priority%20Set%20to%20Remain%20Following%20Appeal%20Decision.pdf

[3] http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P71_4054 

[4] http://www.epo.org/patents/law/legal-texts/html/epc/1973/e/ar87.html

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