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.

© Withers & Rogers LLP March 2021

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Privacy Overview

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." 

2 comments:

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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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.

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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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Priority Claiming: changes from the EPO

• Posted on 24 October 2023

In our latest article, Two IP patent attorney Dr Coreena Brinck brings us up to date with latest changes at the EPO following a recent decision related to Priority Claiming.

The European Patent Office Enlarged Board of Appeal (“EboA”) recently handed down a joint decision on two cases, G1/22 and G2/22, that could make challenging the right to claim priority much harder at the EPO. It may also have a similar effect on priority claim challenges at the Unified Patent Court for proceedings involving unitary patents obtained via the EPO and for proceedings involving nationally validated EP patents brought before the UPC or national courts.

A priority right allows a patent application to benefit from an earlier patent application’s filing date when assessments are made regarding what prior art is relevant for novelty and inventiveness. If a document is found which was published within the priority year, the maximum time period for which priority can be claimed, attacking the priority right can mean the difference in a patent dispute between winning and losing.

The legal right to claim priority is, however, separably assignable from any rights to a patent for an invention. It is not unusual to file a patent application and later confirm the assignment of the right to an invention (including the right to claim priority) with a confirmatory agreement between the inventor(s) and the patent applicant(s). If there are changes in the inventor(s) or applicant(s) during the priority year, the right to the invention and to claim priority should be assigned to the new applicant(s) before any subsequent applications needing to claim priority are filed.

Handling issues like this is bread and butter work for patent attorneys providing, of course, they are made aware of any changes in sufficient time so that the right to claim priority is executed before the end of the priority year. The EPO decisions on G1/22 and G2/22 do not change how important it is to keep your patent attorney informed of any change of ownership or company structure so all necessary assignments are executed within the priority year. This ensures that the right to claim priority has been assigned in good time and can be validly claimed.

The specific circumstances around G1/22 and G2/22 address some of the problems with priority which may arise where the applicants change during the priority year and an international PCT patent application is filed with different applicants for different states. The appeals to the EboA which resulted in the decisions set out in G1/22 and G2/22 were requested by two EPO technical BoAs hearing cases T1513/17 and T2719/19 (OJ EPO 2022/A92). In these two cases, the EPO Opposition and Examining Divisions had to decide if the priority claim for the disputed patents was invalid. The inventors were named as applicants in a US patent application. In a subsequent PCT application, as was common at the time it was filed, the inventors were also named as applicants but only for the US, with the European applicants being separately designated. As there was intermediate prior art being used to attack the validity of the patents, making the priority claim vital, the European applicants sought to imply there was an assumption of an assignment of the priority right by virtue of the inventors being named as applicants for the US in the PCT patent application from which the EP patent application was derived. If successful, this could allowed them to benefit from the EPO approach when there are co-applicants designated in a subsequent EP filing application claiming priority from an earlier application that there is an assumed agreement between the applications to jointly claim priority.

The EP technical divisions hearing the oppositions referred to the Enlarged Board of Appeal on the following questions:

I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II. If question I is answered to 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 in the case where

• a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
• the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
• the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

These were answered as follows:

I). European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.

There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing regulations is entitled to claim priority.

II). The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.

What does this mean in practice?

These decisions raise the bar for providing evidence challenging that the right to claim priority was not effectively assigned in quite specific circumstances. Good practice remains executing all necessary assignments to the invention and of the priority right as soon as possible in the priority year.

If you would like support from our experienced patent attorneys to understand how this change could affect you, contact us via our website here .

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Copyright rowed back

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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.

Priority right - prove it or lose it

25 February 2021

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. The application claimed priority from two US provisional applications, filed by applicant-inventors who were not applicants of the subsequent PCT application.

During the appeal proceedings, the Board of Appeal identified an article published by the inventors between the priority dates and the filing date. The article was considered to be particularly relevant to the claimed subject matter. As a result, the validity of the priority claims became pertinent to the application’s patentability.

Article 87(1) EPC states that “Any person who has duly filed […] 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”.

According to established EPO practice, all applicants of a priority application, or their successors in title, must be applicants of the subsequent application for a valid claim to priority.

CRISPR patent appeal decision: EPO maintains “all applicants” approach to priority

The EPO’s “all applicants” approach to priority was recently confirmed in the widely reported appeal decision T 844/18 (see our summary article: “CRISPR patent appeal decision: EPO maintains “all applicants” approach to priority”, 21 December 2020: https://dycip.com/all-applicants-priority).

In addition, any transfer of the right to claim priority must have occurred in advance of the filing date of the subsequent application. Although other jurisdictions allow retroactive transfers of priority rights, they are not accepted by the EPO.

In the present case, each of the US provisional applications specified that the University of Western Ontario was an assignee on their respective filing dates (and therefore in advance of the PCT filing date). However, no further detail of the assignment was included. The Board of Appeal decided that this was not sufficient evidence to establish a valid transfer of the right to claim priority from the earlier applications. In particular, the Board of Appeal reasoned: “This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While… the priority documents... appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.”

The EPC and the Paris Convention do not specify formal requirements for a valid transfer of priority rights. However, it is established EPO practice that an applicant/proprietor bears the burden of proving succession in title when the validity of a priority claim is called into question. Therefore, the University of Western Ontario was asked to provide evidence that it was entitled to claim priority from the earlier US provisional applications. However, it failed to do so. Consequently, the Board of Appeal decided that the application was not entitled to priority, and the claims were found to be obvious in light of the intervening disclosure.

According to established EPO case law, the independence of a priority right and the right to an application does not mean that a valid transfer of a priority right inevitably requires a separate and express assignment declaration. As such, the explicit transfer of a priority right may not be essential, when other evidence is sufficient. For example, in T 205/14 and T 517/14, an expert witness attesting to the applicant’s inherent right to claim priority from an application based on its employees’ service inventions, under Israeli law (the law of the country of employment and place of business), was considered adequate evidence of a right to claim priority. In addition, in the interlocutory decision of the opposition division relating to EP2203462B, an assignment of “the entire right, title and interest in and to any and all Letters Patent which may be granted therefor” was considered to implicitly include the right to claim priority, under US law (the law of the country of the priority filing, and the law governing the legal relationship between the parties).

It is clear from T 407/15 that merely indicating the transfer of the right to a priority application may not be sufficient to prove that the priority right had also been transferred.

Given that an applicant’s/proprietor’s right to claim priority in advance of the filing date may need to be proven for patentability, where not all of the applicants of a priority application are listed on the subsequent application, we recommend that an assignment is executed that specifically mentions the transfer of the right to claim priority.

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