From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 27 March 2017

No admission after the show has started - transfer of priority right must occur prior to filing of subsequent application (T 577/11)

According to Article 87(1) European Patent Convention, any person who has duly filed, in or for any state party to the Paris Convention or any member of the WTO, 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 (emphasis added). The reference to the "successor in title" in Article 87(1) EPC is generally interpreted as requiring a transfer of the right of priority before the filing of the subsequent application (T 205/14, Reason 3.4). 

In T 577/11 of 22 March 2017, Board of Appeal 3.2.05 confirmed this. Transfer of the priority date had undoubtedly taken place in this case, but three days after the filing of the subsequent application. The applicant argued that Article 87(1) EPC did not require that the transfer of the priority right had to occur prior to the filing of the subsequent application. The Board, based on the wording of Article 87(1) EPC and noting that its interpretation was in line with Article 4A(1) Paris Convention and the legislative history of both the relevant provisions of the Paris Convention and the EPC, rejected the appellant’s argument. The transfer had to had taken place by the time the subsequent application was filed. 

The Board notes that German case law considers the date the declaration of priority with the particulars relating to the priority application is filed – which can be done up to 16 months from the earliest priority date claimed (Rule 52(2)), and therefore up to four months after the filing of the subsequent application – as the relevant date (German Federal Patent Court, decision of 15 February 2012, 5 Ni 59/10 (EP), Reasons, point I.2, and decision of 28 October 2010, 11 W (pat) 14/09), Reasons, point II.B.2(a)(cc)). In the case at hand, Rule 52(2) was not applicable because the application that led to the patent was a PCT application. Under Rule 4.10(a) PCT, the declaration was to be made on filing the subsequent application, which it was. Nonetheless, the Board indicates that even if the present application had not been a PCT application, it did not consider the German approach convincing, as the filing of the declaration of priority was a “mere formality” that did not change the relevant date, which was the filing date of the application.

The decision does not come as a great surprise. There has long been a consensus that the transfer of a priority right must occur prior to the subsequent filing. However, given the careful reasoning and the amount of space the Board dedicates to the issue, T 577/11 may be considered the leading case on this for the coming years. The take-away for applicants and their representatives is that they better get those assignments signed prior to filing the subsequent application, or else the curtain falls on the priority claim.

8 comments:

US priority said...

I wonder how this decision relates to US provisional priority applications where the inventors are the applicants and there is an assumed assignee. Does there need to be a formal assignment to the assignee (that will be the applicant in Europe) from the US inventor applicants or can it be assumed that for priority purposes the assignee will automatically be assumed to have the priority right. Does anyone know of any T decisions on this point?

Anonymous said...

What would have been the position if it had been argued that the later written agreement was a confirmation of an oral agreement executed before the filing of the PCT application?

The Convention watchdog said...

Re The legal Situation in Germany:
The 2 decisions of the German Federal Patent Court (BPatG) cited in the post are apparently not in agreement with the later decision of the Federal Supreme Court (BGH) GRUR 2013, 712 - Fahrzeugscheibe in which the BGH expressly stated: "The priority of a national application can only be claimed if the different applicant of the later European application has obtained the right of priority within due time, i.e. before filig of the later application." This is expressly mentioned in T 577/11, Reasons pt. 7.2.

Look at things said...

As the transfer of priority was between companies of one and the same group, it would have been easy to wait and transfer property of the application after filing.

A transfer of priority based on an oral agreement is something quite new. Never heard of it before. A good try of the representative in charge, but not convincing. An Italian priority application property of a Dutch company which itself sells its priority right to a company based in Lichtenstein, which itself is transferred to Kingston in the Caribbean is odd to say no more.....

More important, it is now confirmed that a transfer of priority can only occur before the filing of the subsequent European application, and that national law is applicable, as for all questions relating to property of IP rights before the EPO.

The illustration of the meaning "the debate in closed" before BA is excellent. There must be very good reasons to reopen it. Here the proprietor having realised that its first attempt was without success, it was to be expected that he would take the chance at a second OP. Tough luck.

It is certainly bitter for the proprietor, since the priority being not valid for formal reasons, the patent was revoked as a document became prior art under Art 54(2).

The only point questionable in the decision is the authorisation of an accompanying person to speak at the second OP in spite of the opposition of the respondent. On the face of it G 4/95 was not applied correctly. In the present case, it can be explained by the fact that the same accompanying person had already spoken before the BA during the first OP on the same topic. The fact that the accompanying person was a Dutch law specialist can also have played a role.

The situation is thus clearly different from that in T 756/09 in which an Australian patent attorney was allowed to speak in spite of the opposition of the respondent. There G 4/95 was not respected be in its spirit or in its letter.

XXX said...

I understood that an oral agreement to assign a priority right is OK under UK law, but I don't know the legal basis for this, and would not want to rely on it

benQ said...

@US priority:
Essentially the question boils down to whether the EPC, in particular Article 72 thereof should be applied to assignments of the right to (refer to the) priority. Here we have currently two standards to consider.

1) The standard of T62/05, the restrictive standard requiring bilaterally executed assignments to demonstrate legal succession, applying Article 72 EPC by analogy to transfers of (national) prior rights, i.e. the problematic one.

2) A more reasonable standard set by decisions T160/13, T517/14 and T205/14. Both T517/14 and T205/14 determine the relevant law that governs the requirements for a valid transfer of the right of priority (to be the relevant national law; Reasons point 2.7 of T517/14, point 3.6 of T205/14) and explicitly dismiss the approach of T62/05 to apply the formal requirements set through Article 72 EPC.

The recent edition of the Case Law of the Boards of Appeal of the EPO (8th Ed. July 2016) also rather promotes the more reasonable approach of the later decisions to consider a transfer valid if it was in line with the national law of the parties concerned.

For EP filings, I recommend to have the inventors and the (later) assignee as joint applicants on the second filing (EP) and to record a change to the assignee as only applicant later on. If all parties are comfortable with this course of action, it saves a lot of possible trouble (identity of the parties, change of assignee's name, completeness of signatures on the assignment documents, etc.).

Jim Robertson said...

Equitable title *may* be sufficient for the UK. In Idenix v Gilead [2016] EWCA Civ 1089, (see paragraphs [262]-[266]), Kitchin LJ gave the provisional view, obiter, that the transfer of equitable title in the priority year could be sufficient to render the transferee the successor in title for the purposes of the Paris Convention, which is in line with previous Patents Court jurisprudence on this point.

Anonymous said...

@XXX

According to the Black Book, Beloit v Valmet [1995] R.P.C 705 might be relevant. In this case there was no formal assignment of priority right, but there was a pre-existing agreement allowing a licensee to apply for patents if the licensor decided not to do so himself. This agreement was held to be sufficient basis for a entitlement to claim priority (not sure if verbal or otherwise).

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':