Priority to Foreign Application Requires “Inventor’s Knowledge or Consent” at the Time the Foreign Application was Filed

PatentLawPic009Boston Scientific SciMed v. Medtronic Vascular (Fed. Cir. 2007).

SciMed’s patent application was originally filed by a European company (MinTec) in February 1994 as an European Patent Application. At that time, however, the inventors (Cragg & Dake) had not yet assigned rights to MinTec. Cragg assigned his rights a few months later. Dake did not assign his rights until 1996.

Medtronic has a US priority filing date of June 1994 on the same invention. In the interference, the question is whether a US patent applicant claim priority to a foreign application filed by an entity that was not acting on behalf of the US applicant at the time of filing? CAFC Answer: No priority unless foreign application was filed on behalf of the US applicant.

Under the court’s ruling here, 35 USC 119(a) provides a personal right to the inventor. Consequently, there must be a “nexus…between the inventor and the foreign applicant at the time the foreign application was filed.” That nexus requires at least “knowledge or consent” of the inventor.

“Indeed, as a matter of pure logic, an entity could not have filed a foreign application “on behalf of” an inventor without the inventor’s knowledge or consent; that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here.”

Holding:

“[A] foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.” (emphasis in original)

Notes:

  • This decision [LINK]: Scimed Life Sys., Inc. v. Medtronic Vascular, Inc., — F.3d — (Fed. Cir. 2007).
  • Final BPAI Decision: Patent Interference No. 104,192, Paper No. 187, 2001 WL 1339890 (B.P.A.I. July 21, 2001).
  • Trial Court Decision: Scimed Life Sys., Inc. v. Medtronic Vascular, Inc., 486 F. Supp. 2d 60 (D.D.C. 2006).

 

73 thoughts on “Priority to Foreign Application Requires “Inventor’s Knowledge or Consent” at the Time the Foreign Application was Filed

  1. Can a continuation (in contrast to CIP) application be filed by Assignee B which has no legal relationship to Assignee A of record of the parent application)?

  2. Maybe there’s more in this case than has been discussed thus far.

    Boston Sci and Medtronic have a common interest, in polishing off the Paris Convention edge that non-US medical device innovators (increasingly active) have over US corporations like Boston and Medtronic.

    American employers are in the habit of going to great pains BEFORE filing any application for protection, to correctly assign inventorship to every contribution to every claim, dependent or independent. Not so those innovative non-American corporations, who (in full conformity with Paris) tend to just go right ahead and file, and sort out later, AFTER securing their First to File edge, who to name as inventor. So, they end up being statistically more likely than American corporations to be senior parties in interferences.

    What can the USA do? Re-negotiate Paris? Maybe. Renege on Paris? Hardly. BUT:it could interpret 35USC119 in such a way as to put foreign corporations on the same footing as American ones. Force them to get cast iron evidence of “knowledge or consent” (from every individual who might conceivably be namable as an inventor) BEFORE the priority date is created. Level the playing field. How could there be any legitimate complaint about that. Indeed, as JAOI(TM) points out above, when he thinks about it, Johnny Foreigner will be grateful to the USA for spotting and eliminating at long last a centuries-old defect in Paris.

    How to do it? A CAFC Decision would do it. But the dignity of the judges who are going to write the instrument must be respected. OK. Let’s filter out all the inconvenient stuff, in good time before it gets to the CAFC. There you go. That’s what happened here.

    Remember the Hilmer Doctrine? Until you get yourself a USPTO date, you get no 102(e) effect. (For European readers, that’s no Art 54(3) effect). Take a pair of rival USPTO filers. Who would you rather be at the USPTO: Motorola or Nokia? The argument that Hilmer is compatible with Paris never did quite convince me.

    Any plans to address any of this stuff, in the bills before Congress?

  3. Dear A Different UK patent attorney,
    (Dear PseduoAnon, this may futher assuage your Scimed concerns),

    I have a follow-up question regarding the explanation of UK nation law you so graciously provided in your Aug. 13th comment.

    My original question was:

    “1) If a European employee worked for a European employer and there was no work agreement between these parties, and if the employee invented something while on the job, could the employer file a European patent application claiming ownership without telling the employee?”

    To which you answered:

    “I’ll answer the question on the basis of UK national law.
    “Yes, the employer can file without telling the employee – and even without naming the employee up front. However, he has to name the employee within 16 months, and tell the EPO how he derives rights from him, otherwise the European application will be ‘deemed withdrawn’. The EPO will pass that information on to the employee.”

    My follow-up question regards this phrase from page 6 of the August 8, 2007 CAFC Scimed v Medtronic decision (which decision seems to have been initially misunderstood by some Europeans in a rush to judgment against the U.S. vis a vie (pardon my French) reneging on its obligations under the Paris Convention Treaty):

    “Indeed, as a matter of pure logic, an entity could not have filed a foreign application ‘on behalf of’ an inventor without the inventor’s knowledge OR consent;” (emphasis added).

    Insofar as I understand the (mistaken) concern, the concern stems from the use of the words “knowledge OR consent” (note: one OR the other would suffice).

    Here is my follow-up question:

    Since the UK law gives the employer the right to file “without telling the employee – and even without naming the employee up front”, does not that mean the employee consented to the “consent” of concern upon accepting the job?

    Incidentally, it is my laymen’s understanding that U.S. law parallels UK law in these regards:

    1) Patent applications in the U.S. can also be filed on behalf of an inventor “without telling the employee – and even without naming the employee up front”.

    2) There are also a number of months [I think it is 2 months extendable by another 5 months] in which the applicant must thereafter name the inventor after receiving notice from the PTO of “missing parts” [and it may be some months after the application is made before such notice is sent by the PTO to the applicant].

    3) If the missing parts are not filed timely, the application over here would also be ‘deemed withdrawn’ as it would over there.)

    As I commented before, “Quite sensible, UK law, like US law.”

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  4. Dear PseduoAnon,

    Regarding your last paragraph:
    “One interpretation of the present decision would deny priority claims under this situation. The only potential remedy is a constructive assignment type argument, which would still seem to run contrary to the ‘mater of pure logic’ comment.”

    One way to look at it is this;
    If there was only one way interpretation, a lot of attorneys would be out of work.

    Case in point, from Scimed page 5:

    “35 U.S.C. § 119(a) reads in relevant part:
    An application for patent for an invention filed in this country by any person who has, or whose LEGAL REPRESENTATIVES or assigns have…” (emphasis added)

    Yet another way to look at it is this:

    You are a damn cite (sic) BETTER OFF AFTER SCIMED THAN YOU WERE BEFORE.

    BEFORE Scimed you had “LEGAL REPRESENTATIVES.”
    AFTER Scimed you have “NEXUS.”

    Here’s how I would argue: The CAFC Scimed decision’s proffered remark, “Indeed, as a matter of pure logic…” is an interesting speculation. It was not proffered as a matter of law. As was made explicitly clear by unanimous decision, it is merely “a matter of pure logic.”

    The CAFC Scimed decision used your “strong wording” only when it cited the 119(a) controlling law, e.g:

    “In other words, while the foreign application must obviously be for the same invention and may be filed by someone other than the inventor, section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed.”

    If competently and timely argued, Scimed will be a blessing because an employer/employee relationship more than satisfies Scimed’s new 119(a) nexus requirement.

    Therefore, in a possible future controversy, if one made a constructive assignment argument as necessary citing Scimed’s strong 119(a) nexus wording and its “matter of pure logic” as judicial speculation, thus heading the other party off at the piss, all else being equal, said one’s argument should prevail.

    * * * * *

    Dear A different UK patent attorney,

    Should the need arise, please feel free to use my arguments with my compliments and best wishes. Now that you and I have a NEXUS, a simple thank me would be nice.

    * * * * *
    Dear (ugh) Max,

    Feel free to use my arguments; Lord knows, you need all the help you can get.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  5. Just a gloss on that last contribution. What if Fred is employed by company B within the corporate group, and it is sister company A that always files the patent applications, by agreement within the corporate group. Or what if Fred is an employee of the outside contractor toolmaker or laboratory or software house? Must filing wait till Fred is sorted. we’re talking “First to File” here. A race to the Patent Office before corporation X gets there, even for USA if we want to be interference senior party.

  6. PseudoAnon, thanks for that.

    I’d just like to head JAOI off at the pass, before he points out that a nexus would still exist between the inventors and the employers in the common situation you describe. Maybe so; but it’s not the sort of nexus that the CAFC has said is necessary. Requiring knowledge and consent at the time of filing is more onerous than merely showing the existence of an employer-employee relationship.

    I work in an in-house patent department at a UK manufacturing company. In the wake of this SciMed decision, my colleagues and I are currently trying to set up procedures to ensure there is knowledge and consent of the inventors *before* we file initial UK patent applications. From experience, it’s not always going to be easy.

    Typically, when we are drafting an application, we will discuss with the inventors who contributed what. This is quite likely to bring out that the subject matter of sub-claim 9 was contributed by Fred, a team member of whose involvement we had not previously been aware. All it needs is for Fred to have just left on a two-week vacation, and the application has to be filed by next week when the invention is due to be made public, and we have a problem making him aware and getting his consent.

    This knowledge and consent at the time of filing is not required for our UK application. Not telling Fred until he returns from his vacation is perfectly acceptable here.

    Nor is this knowledge and consent at the time of filing required under the Paris Convention in order to get priority in any other country.

    Except for one country: the USA, should we subsequently decide to file there.

  7. Just an ordinary inventor(TM) thank you for your analysis. On the particular odd facts of the case, it may well be consistent with Paris. What seems to be concern to the European practitioners is that you implicitly assume that a “Nexus” could be shown by the applicant under normal conditions, but that is not clear from the language of the case.

    “Indeed, as a matter of pure logic, an entity could not have filed a foreign application “on behalf of” an inventor without the inventor’s knowledge or consent; that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here.” and

    “we now explicitly hold that a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.”

    Given this strong wording, it seems very debatable whether you could file a patent application, obtain an assignment later, and still claim priority. This is fairmly common practice in most of the world and acceptable under the Paris convention. (and contrary to your implication, are not inhereintly fradulent. The inventors are under a legal obligation to assign any rights to the employers, the employers are under no obligation to advise the inventors as to whether an application has been filed, etc.)

    One interpretation of the present decision would deny priority claims under this situation. The only potential remedy is a constructive assignment type argument, which would still seem to run contrary to the “mater of pure logic” comment.

  8. When EP
    posted his Aug 14, 2007 at 09:13 AM comment, he hit the mark. EP wrote:

    “I think in normal circumstances there will be very few incidents when an applicant does not have a nexus with the inventor at the time of filing. E.g. in the UK, you have 16 months to show evidence of a nexus, but it still has to exist for you to claim the invention at the time of filing, i.e. it would be very foolish to make an application on the grounds that you think you can sort out the entitlement in the next 16 months.
    “And in cases, where they don’t (have a nexus), I think it will be likely that these same circumstances would probably not comply with the requirements of the Paris Convention, i.e. two separate and unrelated applicants filing patents in different countries at different times using the same research.
    “So all in all, it probably is consistent, it just sounds different.”

    Dear EP,

    Not only were your thoughts sound and insightful, but you are one of the few European commenters (I assume you are, but please correct me if I’m wrong) on this thread without a “stick it to the provincial Yanks every chance you can” attitude (Footnote 1; please see below).

    If you know me from my postings, you can bet I’ll be commenting more on that and related subjects from time-to-time, such as now. I think your colleagues are not dumb, quite the contrary. But to candidly lay my cards on the table, in my humble opinion, they’d do well to remember the sacrifice and strength Americans spent to preserve your – and ours too – freedom. I’d like to see more take guidance from over here and less from others over there.

    WOW, I cannot believe I just wrote that. I guess I woke up on the “right” side of the bed this morning. If I’ve offended anyone who doesn’t deserve offending, please accept the sincere apologies of Just an ordinary but a bit outspoken patriotic inventor(TM) who happens to be on emotional pins and needles having bet my farm on one of my patents (which happens to have a corresponding EP). But I stand by what I’ve said and my right to speak freely, and I accept being judged thereby.

    As your hard working, doesn’t-shoot-from-the-hip-colleague, and one whom we should all admire and appreciate, and one whom all should consider to be the resident research expert on this thread, “UK Patent Attorney 2,” said after my last explicit Max attack,

    “At the risk of dragging this back to the facts, I though I’d be radical and take some time to read the decision from which this appeal has arisen. This sheds some light on the issue, but doesn’t clear it up totally.”

    My following comments may be help advance the ball down the field a few yards:

    Say, arguendo, that “Inventor A” worked for “Company B “which was acquired by “Company C,” which used “Holding Company D,” which was acquired by “Company E,” …, which used “Holding Company Z” to file its patent applications in England and elsewhere in Europe, and if the priority filing date of one of “Inventor A’s” inventions was at issue in a USPTO proceeding or a U.S. district court, and the factual lineage issues (e.g., “theories of constructive trust and equitable assignment”) were adequately and timely argued under 35 USC 119(a) (which reads verbatim in relevant part:

    “An application for patent for an invention filed in this country by any person who has, or whose LEGAL REPRESENTATIVES or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country … shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country…”)(emphasis added)

    I expect the outcome could and would be perfectly consistent with the Paris Convention even though the USPTO and U.S. district would properly have, and did, require a “nexus.”

    EP’s comment,
    “I think in normal circumstances there will be very few incidents when an applicant does not have a nexus with the inventor at the time of filing”
    was not only most astute, he was also conservative. I’ll explain…

    So far, no one on this thread or any other has referred to even one case, NOT EVEN ONE, where a nexus did not exist between the inventor and the foreign applicant at the time the foreign application was filed.

    So far, no one on this thread or any other has referred to even one HYPOTHETICAL case, NOT EVEN ONE, where a nexus did not exist between the inventor and the foreign applicant at the time the foreign application was filed.

    Yesterday, I asked “A different UK patent attorney” the following (verbatim):
    PS: In your penultimate comment above, your description of UK national law in the context of two specific examples was reasonable, logical and sensible because a nexus existed between the inventor the applicant. Perhaps you will consider offering alternate examples that are similarly reasonable, logical and sensible.

    Even when I pressed “A different UK patent attorney”
    chose not to do so, or rather, perhaps he could not do so. He gave no example of any case, or even of any hypothetical example, where a nexus did not exist between the inventor and the applicant at the time of filing. From a pragmatic view, it would appear that none exist.

    The only examples I can think of where a nexus would not exist between the inventor and the applicant at the time of filing are FRAUGHT WITH PATENT-FRAUD of one sort or another, fraud that would not be condoned over here, and either would not or should not be condoned in Paris or anywhere over there. Whether or not Paris or anyone else condones patent-fraud of some sort is their choice, and if anyone does, Uncle Sammy most assuredly will not become a co-conspirator. And if it were to be found over there that fraud is fine under the Paris Convention, then I for one would find that grounds to pull out. Treaty or not, no nation should be bound to become a co-conspirator in patent fraud.

    To be fair and to his credit, “A different UK patent attorney” did admit, however, after 300 well written words citing interesting authoritative hyperbole, that:
    “Probably this has never been a significant issue before, because for many years Vogel allowed a sensible interpretation of section 119 that, while not the same as Paris, nevertheless gave the same end result.”
    I agree with him on that. (Incidentally, I think 35 USC 119(a) predates Paris!)

    The remainder of what “A different UK patent attorney” wrote was mistaken, because, a nexus at the time of filing IS required under Section 119(a), and WAS AND ALWAYS WAS required in Vogel, and IS NOW required in Scimed – – all are perfectly consistent with each other. The only pertinent difference is that Vogel was less unambiguous than 119(a) and (now) Scimed, which gave rise to Scimed’s litigation-inspired Vogel argument.

    In responding to Scimed’s unavailing Vogel argument, the CAFC merely clarified the intent of Vogel. Scimed also advanced another argument on CAFC Appeal:

    “Scimed also contends that the district court erred by precluding it from presenting evidence relating to theories of constructive trust and equitable assignment.”

    The CAFC cast no aspersion whatsoever on the potential merits of Scimed’s “theories of constructive trust and equitable assignment.” However, citing controlling U.S. law, the CAFC rejected this Scimed argument because it had not been presented below as required (Footnote 2; please see below)

    Apparently, before the CAFC Appeal, Scimed had more than once shot itself in its proverbial feet as the CAFC decision also noted:
    “The parties stipulated that the only issue to be resolved by the district court was whether the board correctly ruled on Fogarty’s motion attacking the priority benefit initially granted to Cragg, Scimed, 486 F. Supp. 2d at 64, and Scimed did not raise either of these theories before the board, see Final Interference Decision err by precluding Scimed from presenting evidence to support these new legal theories.”

    * * * * *
    THEREFORE:
    The August 8, 2007 CAFC Scimed v Medtronic decision not only abided our patent law, our case law and our Paris obligations, it provided an example of America’s insightful leadership in patent jurisprudence.

    So, when “A different UK patent attorney” asked me above (on this thread):

    “So, does US law comply with the USA’s obligations under the Paris Convention?”

    I answered,

    “YES, for all reasonable intents and purposes, I think so.”

    * * * * *

    Footnote 2 & 1:
    (2) Nonetheless, in this regard, some professionals on this thread, perhaps relying on misinformation or malicious rumors, have suggested that the CAFC justices should have knowingly fudged the law regarding chain of entitlement. This, of course, would have been outrageous, even criminal, to let Scimed take advantage of Medtronic in such an underhanded manner. Had the CAFC done so, Medtronic would have been judicially fudge-fuced(TM).

    (1) There have been malicious ill-founded rumors here and elsewhere in the IP world that last week’s CAFC Scimed v Medtronic decision reneges on the U.S.’s obligations under the Paris Convention.
    As can be seen above, such notions are pure hypothetical bullsh’t.

    Which leaves the question, what accounts for the “rush to judgment”?
    Could it be a “stick it to the provincial Yanks every chance you can” attitude?

    You be the Judge. I’ve probably already said too much (;-o).

    THE MORAL CONCLUSION:
    The August 8, 2007 CAFC Scimed v Medtronic decision not only abided The U.S. Constitution, U.S. patent law, U.S. case law and U.S. obligations under the Paris Convention, it provided an example of America’s insightful leadership in patent jurisprudence.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a:

  9. Here’s an authoritative quote, commenting on section 7 of the UK Patents Act 1977. It comes from the UK Intellectual Property Office’s Manual of Patent Practice. link to tinyurl.com That’s the UK equivalent of the USPTO’s MPEP, or the EPO’s Guidelines for Examination:

    “The status of a properly-launched application […] is not impugned if it subsequently transpires that the applicant has no right to the grant of a patent or that he only acquired the right after making the application.”

    link to ipo.gov.uk

    Similarly, from section 7.03 of the the highly-respected Black Book, the Guide to the Patents Acts written by the Chartered Institute of Patent Attorneys:

    “Subsection (1) [of section 7] states that any person may make an application for a patent, and this provision […] suggests that the application may be made by a person not entitled to the grant in the expectation that the patent will be granted eventually to the rightful owner.”

    JAOI asked why that was reasonable. I’ll repeat what I said before. It’s reasonable because the patent won’t be GRANTED to a person who has no right to it. You have to sort the issue out, and there’s a 16 month time limit for doing so.

    Or in the words of section 7.05 of the Black Book, “it is obviously of importance that the facts concerning entitlement should be correctly established before grant”. Note that’s “before grant”, not “at the time of filing”.

    It seems to me that the most fundamental way in which US law is inconsistent with the Paris Convention is that (according to the CAFC) the priority right is personal to the US applicant, namely the inventor. Paris doesn’t say that. It says the priority right belongs to the person who applied for the foreign application.

    Probably this has never been a significant issue before, because for many years Vogel allowed a sensible interpretation of section 119 that, while not the same as Paris, nevertheless gave the same end result.

    But now the CAFC are re-interpreting Vogel and section 119, in a way that is not only inconsistent with Paris, but also incompatible with the Paris-consistent laws of other countries. The new incompatibilty stems from the requirement for a nexus “at the time of filing” the foreign application.

  10. EP has made several intelligent points on this thread but is plain wrong in his most recent post.

    In the UK you have 16 months to show evidence of the nexus at 16 months- you never have to show it existed at the time of filing.

    Depending on how indirect the nexus can be, it is common to file applications with no nexus between the inventor and applicant at filing.

    Its pretty common for a company X to file its patents in the name of a Patent Holding company Y. The inventors are employed by X and have no direct legal link to Y. In the UK its not just possible to file the applications in the name of Y and assign from X later, it is advisable. Assigning before filing would require an assignment for each new application whereas it could just do a couple of assignments per year for all the applications filed in the last 6 months. Filing in the name of X then transferring to Y would require an application for a change of the name of record, a recordal of the actual assignment or a new signature from the assignor, and in the case of the EPO payment of a fee.

    I don’t follow EP’s second paragraph. If I file a UK application in the name of Y (when there is no nexus) I can file an EP or PCT application 12 months later in the name of Y and I get a right to priority according to the Paris Convention. There is no requirement for a nexus.

    Now the fact that the US requires the filing to be made initially in the name of the inventors complicates things but it isn’t difficult to make that fit the Paris Convention. The US could allow assignees the right to priority (allow the right to priority from the application in the name of Y provided the US application is assigned to Y), could require that Y must assign its right to priority to the inventors prior to filing the US, or even have all rights to priority to US applications automatically transfer to the inventors. Given the wording of 119(a) “An application for patent … by any person who … assigns have, previously regularly filed an application” Ive always assumed its the first option.

    What it can’t do is say that an Y has no right of priority because Art 4 says

    “Any person who has duly filed an application for a patent […] 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”

    This decision cannot possibly be consistent with the convention -compare

    “that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here”

    with Art 4 (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”

  11. I think in normal circumstances there will be very few incidents when an applicant does not have a nexus with the inventor at the time of filing. E.g. in the UK, you have 16 months to show evidence of a nexus, but it still has to exist for you to claim the invention at the time of filing, i.e. it would be very foolish to make an application on the grounds that you think you can sort out the entitlement in the next 16 months.

    And in cases, where they don’t (have a nexus), I think it will be likely that these same circumstances would probably not comply with the requirements of the Paris Convention, i.e. two separate and unrelated applicants filing patents in different countries at different times using the same research.

    So all in all, it probably is consistent, it just sounds different.

  12. Dear A Different UK patent attorney,

    Please allow me to take one step at a time.
    In the first instance, I posed the following, (A) and (B):

    (A) In what country of the Union, pray tell, can an applicant file for a patent that belongs to someone he has no relationship with?
    (B) Please explain this absurdity.

    Your positive response to (A) was comprised of:
    “For example, section 7(1) of the UK Patents Act 1977 says that ANY person may make an application for a patent. No relationship with the inventor is required AT THAT STAGE [or for 16 months thereafter].”

    The point you stressed was that, in the first instance and for 16 months thereafter, ANY applicant can file a patent application for an invention that belongs to someone else, someone he has no relationship with whatsoever, a perfect stranger.

    I take that to mean that someone in the UK, ANYONE in the UK, even a resident terrorist or local criminal or common patent pirate can read about a bonafide invention in, say, Popular Science or some other journal, or see one in a Star Trek show or some other show, or whatever, and that that someone can then file a patent application for that invention without even knowing the inventor, or the owner of the invention!, beforehand?

    OK, I understand what you are saying.

    Regarding, (B) PLEASE EXPLAIN THIS ABSURDITY, you declare that this is “reasonable,” i.e., “a perfectly reasonable way of doing things.”

    That’s where you and I disagree.

    Please elaborate. In the light of day, I’d like to know why you think this is a perfectly reasonable way of doing things.

    I believe the intent of the Section 7 of the UK Patents Act 1977 is different than the interpretation you paraphrased. Laws are meant to be interpreted so as to be meaningful so they do not create problems. May I suggest that you re-read “Section 7: Right to apply for and obtain a patent.” I don’t think Section 7 anticipated a stranger applying for someone else’s invention. Indeed, that sticky interpretation would be quite problematic.

    Please bear in mind that you have a difficult row to hoe because you already contradicted yourself and already acknowledged that such an interpretation in practice creates a “problem.” That’s where you and I agree.

    You wrote:
    “In practice, if you didn’t have any rights to start with, you have 16 months after the filing or priority date to fix that problem.”

    I have more to say, and I certainly will be mulling the rest of your comment over, but my time is short today and I wanted to rush something off to you.

    I think our dialogue may be more productive if you clarify which one of your positions you stand by:

    (i) “a perfectly reasonable way of doing things,” or

    (ii) “In practice … you have 16 months … to fix that problem.”

    With all due respect, and to be fair, you can’t have it both ways.

    * * * * *
    PS: In your penultimate comment above, your description of UK national law in the context of two specific examples was reasonable, logical and sensible because a nexus existed between the inventor the applicant. Perhaps you will consider offering alternate examples that are similarly reasonable, logical and sensible.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  13. The original post may be slightly misleading. It states:

    “SciMed’s patent application was originally filed by a European company (MinTec) in February 1994 as an European Patent Application. At that time, however, the inventors (Cragg & Dake) had not yet assigned rights to MinTec. Cragg assigned his rights a few months later. Dake did not assign his rights until 1996″

    However Cragg and Dake assigned their rights to Boston Scientific and NOT MinTec (which is what the original post appears to indicate). Now unless there is a relationship between these two companies, SciMed should not be able to claim priority. For example, I do some work for a company and assign my rights in that country so they can file the IP. I then go off to another country and make a separate filing. Since the applicant is not the same, nor is it the successor in title (as required by Paris), then surely I can’t claim priority?

    I would be happy for someone to point out the legal basis in the Paris Convention that would allow me to claim priority from such an application.

  14. Dear JAOI

    You asked: “In what country of the Union, pray tell, can an applicant file for a patent that belongs to someone he has no relationship with? Please explain this absurdity.”

    Answer: If you are talking about the situation at the date of filing, probably quite a few countries permit this. The UK is one. The EPO is another, as appears from the present CAFC Scimed decision itself. And BSN’s comments above suggest that Australia is a third.

    For example, section 7(1) of the UK Patents Act 1977 says that ANY person may make an application for a patent. No relationship with the inventor is required AT THAT STAGE.

    Why is that not absurd? Because you should then read on to section 7(2). This says that the patent can only be GRANTED to the inventor, or someone who derives rights from the inventor.

    link to jenkins-ip.com

    In practice, if you didn’t have any rights to start with, you have 16 months after the filing or priority date to fix that problem. By then, you have to tell the Patent Office who the inventor is, and how you derive rights from him. The patent won’t be granted unless you do.

    There are two ways fix it. Either you get the inventor to assign his rights in the invention to you. Or you assign the patent application to him.

    (I’m ignoring complications, such as where a third party owns the rights to the invention, e.g. the inventor’s employer.)

    Notice how the CAFC’s insistence that there be a nexus **at the time of filing the foreign application** contradicts this perfectly reasonable way of dealing with things. The CAFC says, in effect, that the US way of doing things is the only valid way. And that if any other country has a different solution, then that’s just tough.

    *****************

    I asked: “Does the Paris Convention require that this nexus exist at the time the foreign application was filed? No, that’s not a relevant condition under Paris either.”

    You replied: “Further, please read the comprehensive comment posted by your hard-working, doesn’t-shoot-from-the-hip-colleague, “UK patent attorney 2,” for the fuller story which goes to either (i) the YES conclusion, or (ii) to no conclusion at all in the case at hand.”

    OK, I’ve read my hard-working UK colleague’s comments a second time. He doesn’t answer YES to the question about whether Paris requires a nexus at the time of filing. In fact, he doesn’t discuss the Paris requirements at all.

    Instead, he speculates about possible explanations for how MinTec filed first and only got assignments from the inventors subsequently (but still before the US filing date). It’s not clear to me if he thinks that’s impermissible under Paris, and if so why.

    Bear in mind that Paris says that the priority right belonged to MinTec, not the inventors. Why is it not good enough that the inventors acquired a legal relationship with MinTec before they filed the US application and claimed the priority?

    *****************

    You said: “But I’ll say this, you got the right idea, i.e., to reconcile Paris with 119(a).”

    OK, I gave five different reasons why US law is incompatible with Paris. We’ve just discussed a couple of them. What about the rest?

  15. Dear A different UK patent attorney,

    Quite sensible, UK law, like US law.
    In fact, UK law seems to favour employees.

    So, if a UK attorney represents an employee, the employee’s attorney should push for a contract, but if working for an employer, the employer’s attorney should resist a contract.

    Thanks for taking the time to address my questions.

    I’m also curious about the Union laws in these regards.

    I’ve always admired the UK for preserving its identity and maintaining its well-deserved pride by not yielding to pressures from the mainland.

    Do you think my remark way-above ruffled any Union feathers?, i.e.,
    Far be it from me to suggest that, what Germany didn’t accomplish in WWII, they did with the EU.

    Next to George, my hero is Winston. Had Winston had his way, he’d have taken the offensive in the early 30s and perhaps saved some 70 million lives.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a:

  16. JAOI wrote:

    [quote]

    How would 119(a) treat the following:

    1) If a European employee worked for a European employer and there was no work agreement between these parties, and if the employee invented something while on the job, could the employer file a European patent application claiming ownership without telling the employee?

    [end quote]

    Section 119(a) has nothing to do with this. It’s purely a question for the national law of the country of the employer and employee. The CAFC shouldn’t try to apply US law to the situation. It should just accept the result of the foreign law concerned.

    I’ll answer the question on the basis of UK national law.

    Yes, the employer can file without telling the employee – and even without naming the employee up front. However, he has to name the employee within 16 months, and tell the EPO how he derives rights from him, otherwise the European application will be “deemed withdrawn”. The EPO will pass that information on to the employee.

    Should there be something wrong, the employee can request the UK Patent Office to decide who is entitled to be granted the European patent. The EPO will suspend proceedings until it hears the result. Various remedies are available if the decision goes in favour of the employee. For example, the employee can take over the European application in his own name, instead of the employer.

    JAOI wrote:

    [quote]

    2) What if there was an employment agreement that expressly gave the employer that right?

    Depending on the answers, European employers may want to take heed and consider having an attorney prepare proper employment contracts, and European employees may want to take heed and have their attorney review and negotiate (improved) terms on their behalf. (Suggestion: Always engage the very best attorney available no matter the cost – – you’ll thank me in the morning.)

    [end quote]

    Again, I’ll answer under UK law.

    If the invention was made as part of the employee’s duties, UK law provides that it belongs to the employer automatically. No need for any assignment; it’s purely by operation of law. Hence the ability of an employer to file a patent application without telling the employee.

    If the invention was *not* made as part of the employee’s duties, then the invention belongs to the employee.

    This can be overridden by an employment contract if it is more favourable to the employee. But any employment contract that tries to diminish the employee’s rights is unenforceable.

    Consequently, any competent lawyer would advise a UK employer just to rely on the law as it stands, and *not* to try to cover the matter in an employment contract. Doing that can only make the employer’s position worse.

    (If you get into the details of the law, it’s a little more complicated; but that’s the gist of it.)

  17. Dear A Different UK patent attorney,

    YES, for all reasonable intents and purposes, I think so.

    In what country of the Union, pray tell, can an applicant file for a patent that belongs to someone he has no relationship with? Please explain this absurdity.

    You wrote: “Now compare the Paris Convention. The relevant part is Article 4A(1):
    ‘(1) Any person who has duly filed an application for a patent […] 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.’

    “Does the Paris Convention require that this nexus exist at the time the foreign application was filed? No, that’s not a relevant condition under Paris either.”

    Further, please read the comprehensive comment posted by your hard-working, doesn’t-shoot-from-the-hip-colleague, “UK patent attorney 2,” for the fuller story which goes to either (i) the YES conclusion, or (ii) to no conclusion at all in the case at hand.

    But I’ll say this, you got the right idea, i.e., to reconcile Paris with 119(a).
    Not all have even figured that far.

    Incidentally, what “genius” drafted the Paris treaty anyway?
    (Oops, I asked a question to which I do not know the answer.)

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a:

  18. The CAFC quotes the earlier Vogel decision as follows:

    [quote]
    According to Vogel, “§ 119 gives rise to a right of priority that is personal to the United States applicant.” 486 F.2d at 1072. Due to the personal nature of this right, an applicant for a U.S. patent may only benefit from the priority of a foreign application if it was filed by the U.S. applicant or “on his behalf.”
    [end quote]

    Thus, under US law, the right to claim priority is a right that belongs personally to the inventor (since the inventor must be the US applicant).

    If the foreign application was filed by someone else, the CAFC requires that “a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed.”

    The CAFC also says that the foreign application must have been filed with the inventor’s knowledge and consent. And: “that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here.”

    Now compare the Paris Convention. The relevant part is Article 4A(1):

    [quote]
    (1) Any person who has duly filed an application for a patent […] 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.
    [end quote]
    link to wipo.int

    Does the Paris Convention say that the priority right should be personal to the inventor? No, it says it belongs to the person who duly filed the foreign application. In the present case, that’s MinTec.

    Does the Paris Convention require that a nexus exist between the inventor and the foreign applicant? No, that’s not a relevant condition under Paris. The right belongs to Mintec, not the inventor.

    Does the Paris Convention require that this nexus exist at the time the foreign application was filed? No, that’s not a relevant condition under Paris either.

    Does the Paris Convention require that the foreign application must have been filed with the inventor’s knowledge and consent? No again, that’s not a relevant condition under Paris.

    Finally, does the Paris Convention say that it has “no bearing” that the foreign application “may have been filed in accordance with the laws of the country in which it was filed”? No. On the contrary, it has every bearing. Paris requires that the foreign application should have been “duly filed […] in one of the countries of the Union”. MinTec’s European application was indeed duly filed under EP law.

    So, does US law comply with the USA’s obligations under the Paris Convention?

  19. Dear U.K. Patent Attorney,

    Thank you for “bedding back down” the interest this case aroused in 35 USC 119(a). As in the popular U.S. movie, “O Brother, Where Art thou,” through your efforts we get to eat the whole roasted 119(a) gopher (did this movie play over there, in England?; the dialogue is so clever and unique I’ll bet you’d find it fascinating, far more than just entertaining).

    Thank you also for giving me, “Just an ordinary inventor(TM),” the opportunity to say at the end of the day after my first Patently-O argued detailed analysis of a CAFC decision:

    “I rest my case.”

    Perhaps I should say no more — —
    (Like the attorney defending his client who was accused of biting someone’s nose off. At trial, the attorney asked an eye witness, “did you see my client bite the nose off?,” to which the witness answered, “No.” In stead of resting his case, he asked one more question – one too many – “then why do you think my client bite the man’s nose off?,” to which the witness said, “because I saw him spit it out.”)
    (You may ask why I tell allegedly funny stories: Well, I heard somewhere that “a laugh turneth away wrath” or maybe I got that wrong, maybe the saying is “a soft answer turneth away idiots” – – Whatever fits you know who.)

    So, I will ask two questions, not one.
    I’m told that a good attorney never asks questions without knowing the answers.
    But I’m only an ordinary inventor.

    Here goes my questions regarding what the CAFC decision said on page 6:

    “Therefore, to the extent that there may have been any uncertainty or ambiguity in Vogel, we now explicitly hold that a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.” (There was emphasis in the original on “Vogel,” “only” and “at the time the foreign application was filed.”)

    How would 119(a) treat the following:

    1) If a European employee worked for a European employer and there was no work agreement between these parties, and if the employee invented something while on the job, could the employer file a European patent application claiming ownership without telling the employee?

    2) What if there was an employment agreement that expressly gave the employer that right?

    Depending on the answers, European employers may want to take heed and consider having an attorney prepare proper employment contracts, and European employees may want to take heed and have their attorney review and negotiate (improved) terms on their behalf. (Suggestion: Always engage the very best attorney available no matter the cost – – you’ll thank me in the morning.)

    At the risk of mildly offending those shallow of mind, before I sign off, I’ll tell one more story by way of advice and emphasis, and also to turneth away any possible wrath energy that may otherwise be sent in my direction. (You cannot be too cautious as there is precious little evidence about these matters; who really knows how the incredible universe really works.)

    This story is about lawyers, present company excepted:
    Lawyers should never ask a question if they aren’t prepared for the answer.

    In a trial, a Southern small-town prosecuting attorney called his first witness, a grand-motherly, elderly woman to the stand.

    He approached her and asked, “Mrs. Jones, do you know me?” She responded, “Why, yes, I do know you, Mr. Williams. I’ve known you since you were a young boy, and frankly, you’ve been a big disappointment to me. You lie, you cheat on your wife, and you manipulate people and talk about them behind their backs. You think you’re a big shot when you haven’t the brains to realize you never will amount to anything more than a two-bit paper pusher. Yes, I know you.”

    The lawyer was stunned! Not knowing what else to do, he pointed across the room and asked, “Mrs. Jones, do you know the defense attorney?”

    She again replied, “Why, yes, I do. I’ve known Mr. Bradley since he was a youngster, too. He’s lazy, bigoted, and he has a drinking problem. He can’t build a normal relationship with anyone and his law practice is one of the worst in the entire state. Not to mention he cheated on his wife with three different women. One of them was your wife. Yes, I know him.”

    The defense attorney almost died.

    The judge asked both counselors to approach the bench and, in a very quiet voice, said, “If either of you idiots asks her if she knows me, I’ll send you to the electric chair.”

    * * * * *
    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a:

  20. At the risk of dragging this back to the facts, I though I’d be radical and take some time to read the decision from which this appeal has arisen. This sheds some light on the issue, but doesn’t clear it up totally.

    What is set out in the decision is:-

    The two EP applications were filed by MinTec, without naming any inventors (as is permissable under the EPC). An assignment was executed on 22 August 1994 (ie. after the filings) by Cragg, assigning the invention to MinTec. The assignmnet also named 3 other people as assignees (and thus presumably inventors). There is also a subsequent assignment from Dake to MinTec.

    The US application was filed in the name of at least Cragg, and probably (although this is not clear) a number of the other people name above. During the course of the US application’s life, the inventors have been amended, such that for the subject matter under consideration here, only Cragg and Dake remain (or maybe only Dake, it’s not entirely clear, but also seems unimportant).

    As far as the inventors of concern go (Cragg and Dake), there was no relationship at the time of filing of the EP applications, this only arose later when the assignments were executed. Therefore, at the date of filing the EP applications, MinTec were not acting for Cragg and Dake, and hence Cragg and Dake did not have any right to priority from the EP applications.

    This would seem odd, as you would think that for an application to be filed, there must be some legal relationship there. The decision does not explain this, but a plausible explanation, however, would seem to be:-

    The invention arose out of collaborative work between Cragg, Dake, and the other inventors named, which other inventors were employees of MinTec. MinTec proceeded to file the EP application, forgetting that Cragg and Dake were not their employees and therefore that MinTec needed an assignment from them. This was subsequently executed.

    As the US applications evolved, it turned out that the subject matter was actually that invented by Cragg and Dake, and the other inventors fell away and were removed. Cragg and Dake thus need some relationship to the EP application to be able to claim priority from it. However, Cragg and Dake had no right to the EP applications, at the time of filing them, because the subject matter had not been assigned, and did not pass by employment. The EP applications should therefore have named Cragg and Dake as Applicants, which have subsequently allowed the priority claim.

    This is only guess-work though, and there may be other explanations. Without more information we’ll never know. The party appears to have wanted to argue something like this, but weren’t allowed as they didn’t raise it earlier.

    If this is correct, then I think this decision is correct – the Applicants for the US application had no legal connection to the EPs and therefore couldn’t claim priority from it. This was caused by the Applicants for the EP application being incorrectly identified. If the Applicants had included Cragg and Dake, or the assignment to MinTec had been effective prior to the filing of the EPs, then all would have been well. This would therefore seem to be an exhibition of the importance of carefully checking the rights to the invention before filing, and getting it resolved, particularly where foreign inventors are concerned. This could have been avoided by checking the status of Cragg and Dake.

  21. Dear Lionel,
    Dear Max,

    I responded to you comments/questions posted on the

    “Priority to Foreign Application Requires ‘Inventor’s Knowledge or Consent’ at the Time the Foreign Application was Filed”

    thread
    on the

    “New Proposed Rules: Maiming Markush Claims”

    thread.

    Enjoy.

  22. MaxDrei again. JAOI(TM) has it that I have asserted in these pages that I am competent to advise on US patent law. Never have, in all my long years of practice. Hardly likely to start now, as I get older and more circumspect, and US law gets ever more complex. I admit it freely. I am not competent to advise clients on matters of US law, never have been and never will be.

    As to my Paris Convention question, I live in hope of reading on these pages some persuasive explanation how to reconcile Boston Sci v Medtronic with the obligations which the USA accepted when it signed up to the Paris Convention, and the mutual undertakings to grant priority which it contains.

  23. JAOI,

    How would they get away with it? The inventors supported the assignee in its assertion. This appears to be a case of an interpretation of the letter of the law trumping the spirit of the law.

    With respect to patriotism, I have always considered that one more tool to control the masses. The Germans, for example, have excelled at that. And yes, I understand that dissent is patriotic as well, I just believe patriotism naturally leads to us and them mentalities. I don’t know. I am the guy who was called an unamerican bastard by my eighth grade social studies teacher because my suggestion to improve the schools was to eliminate the pledge of allegiance. Always seemed like something the Soviets would require to me.

    I won’t touch any religious

  24. JAOI,
    What’s the hangup with Max Drei?
    If you have nothing of interest to write, why not get your anger out at poorlyendowed.com?

  25. Max,
    Did I hear you to say, “I am competent!, of course I’m competent!”?

    Then, please, pray tell, why?, oh why?, did you ask above:

    “Can this Decision be reconciled with continued US membership of the Paris Convention club? If so, how? Can somebody please explain it to me? Thanks in advance.”

    Incidentally, you can also keep your disingenuous and offensive “Thanks in advance” to yourself.

    Max: To be fair, I warned you yesterday that, “This time I won’t be so pleasant.”

  26. Max,
    (me again, Just an ordinary patriotic American inventor):

    Oh, I guess I forgot, you previously said you ARE a patent professional, specializing in advising us Americans on European and American patent law.

    So, can we take, from your question above, that you now admit that you (A) are not competent?

    Or, rather, do we conclude that you were just being your disingenuous self?, and we can take your comment as an admission that (B) you are in fact an ANTI-AMERICAN PSEUDO-INTELLECTUAL SABOTEUR?

    Which is it: (A)?, or (B)?

    Please, by all means, explain yourself.

  27. Max,

    I have a thought: Why don’t you hire a competent patent attorney?

    You can afford it out of what you called your “fat bank account.”

  28. Can this Decision be reconciled with continued US membership of the Paris Convention club? If so, how? Can somebody please explain it to me. Thanks in advance.

  29. Dear Max,

    With all due respect, your last comment is perplexing, and it is not consistent with 35 USC 119.

    What Lonnie E. Holder so wisely posted above is worth repeating for those who, like yourself, didn’t read it:

    “Another way of looking at this is that we are comparing a system that focuses more on the rights and responsibilities of individuals (the U.S.) rather than a socialistic or communistic system (from whence the ‘provincial’ comment arose).
    The U.S. system appears to be predicated on the responsibility of an individual inventor to describe his invention and take responsibility for his invention. Some foreign (non-U.S.) systems seem to allow an individual inventor to disappear once the invention has been created. A better question would be which system creates the better patents: The system where a corporation can say whatever it wants to about an invention or the system where an individual has to affirm the facts and details about his invention? The U.S. has made their choice, and other countries have made theirs.
    Choosing words like ‘provincial’ merely adds inflammatory emotion to a discussion that would be better predicated on a factual discussion of the advantages and disadvantages of the systems.
    Incidentally, not that this is relevant to any particular topic, but you people should know that the University of Missouri at Columbia is a rocking school.”
    Posted by: Lonnie E. Holder | Aug 09, 2007 at 09:44 AM

    With all due respect Max, I dare say that you have ill-placed national pride, you are stubborn, you are not the brightest bulb in the pack, and you have a Sore-loser complex as well as a patent-envy complex. I say this for your own good. You’ll thank me in the morning. Please take heed.

  30. NM, Regarding your Thanks:
    You’re welcome. It is down right decent of you to acknowledge that without the sacrifice and strength of the USA, you may have been speaking German today.

    As you know from my comments over past months, I am a red-blooded American through and through, and I tend to be just a bit outspoken, especially when it comes to patriotism. If you are curious, my German, Hungarian, Russian and Polish parents and grandparents came to America through Ellis Island. I am grateful to be an American, and I give thanks at least daily for being an American.

    I’ll share some personal thoughts from my family’s Christmas card: Feeling thankful and projecting prayers of thankfulness into the incredible universe is good for the body and spirit – – such thankfulness is positive thinking, and it fosters self-fulfilling prophecy.

    I believe in the sanctity of patriotism. Together, we comprise power greater than one. Sanctity in America is achieved through strength, honor and principled Biblical behavior, and by helping one another. But I digress.

    I take every opportunity I find to advance what is in my patriotic mixed red-blooded heart:
    BEING ON TOP ISN’T EVERYTHING, BUT IT IS THE AMERICAN THING, AND THAT IS SOMETHING TO BE CHERISHED OVER HERE.

    And then I like to add:
    Getting back to key patent basics for a moment, please remember that anything that limits restricts or reduces in any way the power or value of a U.S. patent to its inventor diminishes our nation’s competitive edge in the global economy.

    Now, if you want a flat world, where our country loses its preeminent global position and stands behind socialistic, communistic, totalitarian or other such nations, then, sarcastically speaking, by all means, let’s sterilize our patent system like the patent systems elsewhere. It seems the three branches of our current sold-out government are going in that direction, so let’s follow like lemmings.

    In following like lemmings, recognize that everything is a trade off:
    The weaker the U.S. patent system is, the fewer inventors, especially independent inventors, those who go on to created the backbone of the American economy and our world strength, the Apples and Microsofts, will publish their innovations, and the more other nations will eat our lunch.

    By all sarcastic means, let us promote the progress of those nations who are yearning to eat our lunch.

    * * * * *
    The Framers of our Constitution would be ashamed of us in the IP community, with our smarter-than-the-average-bear intellects, if we stand by and let our nation be sucked into the crowd of second-rate nations. America has endured and survived piss-poor leadership in all three branches of our government from time to time since our beginning.

    I attribute our remarkable ability to survive and stay on top to the strength and honor of America’s patriotic citizens. I’ll be damned if I stand by and do nothing, and let my children or their children grow up in a second rate nation.

    Today, America is under constant threat of physical, intellectual and propaganda attack on our homeland from without and from within. I keep thinking about WWII. Could we have won if all American’s didn’t chip in?, from Rosie the Riveter to the mob whacking saboteurs on our docks?

    * * * * *
    Lest we forget: A patent without an injunction is like a gun without bullets.

  31. Caution: Some of my comments below are not for the faint of heart.

    Dear NM,

    Re: “the central tenet of your remark.”

    You misread my comment. What I specifically said was:
    “America’s patent system is the strongest, and our patent system strength has historically contributed to our leadership in technology, our financial strength and our premier global position.”
    As you can now see, I used the term “leadership” explicitly, not implicitly. Your implicit observation is mistaken when it comes to America’s patent system, i.e., I did not imply, nor do I think that, others follow or try to emulate our patent system.

    Nonetheless, I’ll give you the benefit of a responsive comment to your mistaken observation leading to your “central tenet.”

    I’d venture to suggest that:
    (i) ill-placed national pride,
    (ii) Stubbornness,
    (iii) dumkoph-like Stupidity, and a
    (iv) Sore-loser complex

    account for why the European Patent Community in 1973 did not follow the American patent system.

    All you have to do is look to the leading European nation to find relevance for my four thoughts. HOWEVER, FAR BE IT FROM ME TO SUGGEST THAT, WHAT GERMANY DIDN’T ACCOMPLISH IN WWII, THEY DID WITH THE EU.

  32. MaxDrei and naughtymonkey are not related.

    MaxDrei is thinking only of natural justice, and the guiding principle for decent behaviour “Do as you would be done by”. I imagine that at least some American children are taught that principle still.

    Everywhere in the world, except USA, patent applications are filed in the name of the owner of the invention. Everywhere, except USA, that owner is free to sell that property to another, during the Paris year, and the new owner is then free to enjoy a right of priority, when filing in every other member of the Paris Convention. Except that, exclusively and only in the land of the free, that new owner is denied that right. You can file in any country of the world you like but, if you want priority from your first filing, best make it the USPTO. Where’s the problem, I hear some of you cry. My answer “Do as you would be done by”

    Or has the alien MaxDrei misunderstood US law once again?

  33. Dear Lionel,

    Despite my previous seat-of-the-pants assertions, I also have been thinking about your question, “What kind of dishonest occurrence…?”.

    Without some certifiable way to establish a nexus, such as payroll records which are readily verifiable, all a dishonest party(s) would have to declare is, “yes, we had a relationship” (sort of like a “no-doc” mortgage).

    Without a certifiable way to establish a nexus, the potential question would then be, which party has the onus of proof?, the party asserting the nexus?, or the other party? If the latter, it could be a sticky problem because it may be hard to prove the lack of a nexus. And it could get sticker yet if the asserting party phony’s up some unverifiable evidence or testimony.

    However, in regards to the decision of the case at hand, whether or not an inventor assigned his interest to the French company, i.e., the chain of entitlement and related nexus issues, for whatever reasons, had not been argued before the PTO Board or before the district court. Under such (lack of) circumstances, fresh arguments cannot be advanced on subsequent Appeal. This procedural constraint is quite logical and pervasive.

    Similar to the roasted gopher dialogue in “O Brother, Where Art thou,” the circumstances here raise one’s interests in 35 USC 119(a) without bedding ’em back down.

  34. So I see you think I am German? Very clever! MaxDrei may be but I am not. No doubt s/he finds your wild theories as funny as I do. I note though that you did not really reply to the central tenet of my remark. You have said that the world looks to America for leadership. It seems to me that it is implicit within that term that in order to lead you must have others to follow. As I remarked there is very little about the US patent system that has in fact been adopted by the rest of the world. This is despite the fact that the US adopted a patent system very early on in its existence and certainly way ahead of the EPC. I therefore struggle (with my little European mind) to reconcile your remarks with what seems to me to be the plain facts.

    Thanks by the way for saving us from Hitler!

    NM

  35. JAOI,

    What significance do you ascribe to “As also posted above, to not require at least some “nexus” between parties would be to allow a party to falsely back-date an interest in another party’s property – and, of course, that would be dishonest.”

    What kind of dishonest occurrence are you considering? I am not sure how it could be a problem.

    I am also concerned that one inventor apparently had assigned his interest to the French company, which would seem to be enough given the rules on joint ownership of patents.

  36. Dear Max Drivel (alias “naughtymonkey”), the PSEUDO-INTELLECTUAL SABOTEUR:

    You cannot fool me. I know you are just playing with your “naughtymonkey,” or maybe “naughtymonkey” is your shill.

    But I’ll give you the benefit of a responsive comment anyway:

    I’ll bet my farm that the United States is way way ahead in so so many ways of wherever you are.

    What the hell does that tell you?
    Talk about nuts, you are a classic “dumkoph putz.”

  37. JAOI

    You really are a nutcase. If the US patent system was as good as you say it is then the rest of the world would have first to invent, interference, no opposition provisions, jury trials for patent actions etc etc etc. They don’t. That should tell you something, if you are prepared to listen………

  38. Dear Just Visiting,

    (Previously posted above) Referring to the paragraph above the penultimate paragraph of their decision, the CAFC pointed out the following (my capitalization emphasis added):
    “In other words, while the foreign application must obviously be for the same invention and MAY BE FILED BY SOMEONE OTHER THAN THE INVENTOR, SECTION 119(A) ALSO REQUIRES THAT A NEXUS EXIST BETWEEN THE INVENTOR AND THE FOREIGN APPLICANT AT THE TIME THE FOREIGN APPLICATION WAS FILED. Indeed, as a matter of pure logic, an entity could not have filed a foreign application ‘on behalf of’ an inventor without the inventor’s knowledge or consent; that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here. Therefore, to the extent that there may have been any uncertainty or ambiguity in Vogel, we now explicitly hold that a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.”

    According to Merriam Webster, which defines nexus as “a causal link,” the relationship between an employer and employee should be at least the required a nexus and would meet the 119(a) requirement pointed out in the CAFC decision.

    If there is definitive case law in which chain of entitlement and related issues were actually argued, it would be a more important determinant factor than the decision here.

    The “pure logic” about which the CAFC only briefly speculated, i.e., “knowledge or consent,” is not/would not be controlling, and would be subject to the comprehensive circumstances raised by a possible future litigant(s) in his (their) argument(s).

    As also posted above, to not require at least some “nexus” between parties would be to allow a party to falsely back-date an interest in another party’s property – and, of course, that would be dishonest.

    Most importantly, in the decision of the present case, for whatever reasons, the chain of entitlement and related issues had not been argued before the PTO Board or before the district court. Under such (lack of) circumstances, chain of entitlement and related issues cannot be presented on subsequent Appeal. I believe this logical procedural constraint is (almost) universal.

  39. “Indeed, as a matter of pure logic, an entity could not have filed a foreign application “on behalf of” an inventor without the inventor’s knowledge or consent”

    I don’t think this statement is true, and the statement is central to the decision in this case. I think any of us can come up with situations where individuals (such as our parents) did things on our behalf without our knowledge or consent. For example, if the party was required to allow filing of an application to keep his job, the company might file the application rather than firing the inventor.

    It might well be that proof in this case was impossible because it required arguments the parties were precluded from making, but I think making the statement is not absolutely true and points out why a contrary decision would not have violated US law.

  40. Max Drivel is a pseudo-intellectual saboteur.

    Max wrote:
    “As I’ve said before, this blog gives valuable insights into the way Americans think.” [so I can better subvert you clueless yanks] “With my comments I want to stimulate a lively thread, that’s entertaining, educational and informative.”

    This is Max-speak to cover-up his covert objective which is to denigrate America, notably our stronger-than-others’ patent system. Over the past months, Max has slipped several times and inadvertently revealed his dark inner self which includes contempt for independent American inventors.

    Max doesn’t get offended – he simply doesn’t like being exposed as a pseudo-intellectual saboteur.

    But I mean no disrespect that Max hasn’t earned. Max is what he is and he tries to flaunt false pride and civility to hide his shameful agenda.

  41. Dear BSN,

    Re: “… why should it matter, for instance, whether formal assignment occurred before or after a priority founding application was filed?”

    Please rest at ease: You needn’t be disturbed by the decision. As pointed out on page 6 of the decision in relevant regard to your inquiry, it does not matter when formal assignment occurred:

    “… while the foreign application … may be filed by someone other than the inventor, section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed.”

    The relationship between an employer and employee is, of course, at least the required nexus under section 119(a).

    To not require at least some “nexus” between party would be to allow a party to falsely back-date an interest in another party’s property – and, of course, that would be dishonest.

    In the decision of the present case, for whatever reason, the “chain of entitlement” had not been argued before the PTO Board or to the district court. Under such circumstances, the chain of entitlement cannot be presented on subsequent Appeal. I believe this logical procedural constraint, please tell me if I’m wrong, is almost universal.

  42. As an Australian attorney, the decision disturbs me. A principle of our law, which seems reasonable, is that one must show a chain of entitlement from inventor to patentee. When the entitlement was formally established is not important. There is an invention which deserves a patent; there is an inventor and a patentee; both the inventor and the patentee agree that the patentee should own the patent; there are no substantial issues of novelty or obviousness to deal with … why should it matter, for instance, whether formal assignment occured before or after a priority founding application was filed? Surely this obstructs the purpose of the patent system.

  43. I did read the Decision, with its discussion of “on behalf of” and “at the time”. Then I read the comments about points of constructive trusts etc having been unargued. I concluded that the definitive last word comes only when the court has had the benefit of hearing all the relevant legal arguments. Hope I am not over-optimistic. Am I?

    As I’ve said before, this blog gives valuable insights into the way Americans think. With my comments I want to stimulate a lively thread, that’s entertaining, educational and informative.

  44. Malcolm, I’d bet they don’t have a keen sense of humor like yours.

    Speaking purely late-night humor – Caution, those with serious work to do, please be warned, this following posting isn’t too serious – Did you read about the bricklayer’s accident report, which was printed in a newsletter of a Workers’ Compensation board? I won’t say in which country this accident occurred lest I unintentionally offend someone. This allegedly is an authentic construction worker’s letter which began simply:

    Dear Sir,

    I am writing in response to your request for additional information in Block 3 of the accident report form. I put “poor planning” as the cause of my accident. You asked for a fuller explanation and I trust the following details will be sufficient.

    I gave up inventing to become a bricklayer by trade. In hindsight, it is now obvious to me that that was a 103, maybe even 102, mistake.

    On the day of the accident, I was working alone on the roof of a new six-story building. When I completed my work, I found that I had some bricks left over which, when weighed later, were found to be slightly in excess of 500 lbs. Rather than carry the bricks down by hand, I decided to lower them in a barrel by using a pulley, which was attached to the side of the building on the sixth floor. Securing the rope at ground level, I went up to the roof, swung the barrel out and loaded the bricks into it. Then I went down and untied the rope, holding it tightly to ensure a slow descent of the bricks. (I don’t really recall what distracted me, perhaps I was wondering why I gave up inventing, or perhaps I had a flash of genius in a moment of relapse.) You will note in Block 11 of the accident report form that I weigh 135 lbs. Due to my surprise at being jerked off the ground so suddenly, I lost my presence of mind and forgot to let go of the rope. Needless to say, I proceeded at a rapid rate up the side of the building. In the vicinity of the third floor, I met the barrel which was now proceeding downward at an equal, impressive speed. This explained the fractured skull, minor abrasions and the broken collar bone, as listed in section 3 of the accident report form. Slowed only slightly, I continued my rapid ascent, not stopping until the fingers of my right hand were two knuckles deep into the pulley. Fortunately by this time I had regained my presence of mind and was able to hold tightly to the rope, in spite of beginning to experience a great deal of pain. At approximately the same time, however, the barrel of bricks hit the ground and the bottom fell out of the barrel. Now devoid of the weight of the bricks, that barrel weighed approximately 50 lbs. I refer you again to my weight. As you can imagine, I began a rapid descent, down the side of the building. In the vicinity of the third floor, I met the barrel coming up. This accounts for the two fractured ankles, broken tooth and several lacerations of my legs and lower body. Here my luck began to change slightly. The encounter with the barrel seemed to slow me enough to lessen my injuries when I fell into the pile of bricks and fortunately only three vertebrae were cracked. I am sorry to report, however, as I lay there on the pile of bricks, in pain, unable to move, I again lost my composure and presence of mind and let go of the rope and I lay there watching the empty barrel begin its journey back down onto me. This explains the two broken legs. I hope this answers your inquiry.

    VTY

  45. “I resent you putting words in my mouth. Do you want to mix it up again? This time I won’t be so pleasant.”

    If this is “ordinary,” I wonder what the “unusually ornery” inventors are like.

  46. This is personal to dreadful Mad Max. Did you mean to break the peace?

    Alien corps maybe, but doing business here and paying taxes here. And I asserted nothing about intimidation. I resent you putting words in my mouth. Do you want to mix it up again? This time I won’t be so pleasant.

    Re: “I take from the sceptical comments above that I should not take this Decision as the definitive last word about the applicability of the Paris Convention in USA, whenever the non-US priority application Applicant is not the inventor.”

    If you are interested, why don’t you just read the decision?

    Have you lied in wait to bust my after-hours chops after licking your wounds for weeks after our last acrimonious encounters?

    Savor your thoughts, I’m off to an early supper. Better yet, stifle, just stifle.

  47. Last time I checked, most of the top twenty filers at the USPTO were alien corporations. JAOI asserts that anything which chips away at the power of a US patent to intimidate reduces the competitive edge the USA has over ROW. So that’s a win-win for the foreign filers then, is it?

    I take from the sceptical comments above that I should not take this Decision as the definitive last word about the applicability of the Paris Convention in USA, whenever the non-US priority application Applicant is not the inventor.

  48. Finally, it is that time of day again — wish I could pour you who may have appreciated one or two of my comments one too. Cheers. Don’t let the bastards get you down.

  49. Dear SF,

    Lest you feel gosh darn dangit bad, let me say to you too, you too are clever. Has anyone ever told you you too ought to have been a lawyer (?-)

    So, is anything serious patent-wise on your mind today?, or are you too just having a little IP enlightened fun?

  50. “Did you forget that we are … under constant threat of attack on our homeland from religious crazies, the worst kind of fanatics?”

    Who? The Christian Right?

  51. Malcolm,

    Boy, you are clever. Has anyone ever told you you should have been a lawyer (?-)

    No kidding, I agree with you, we are under attacks other than those to which I was referring, such as inside attacks that would chip away at the strong American patent system.

    Getting back to key patent basics for a moment, please remember that anything that limits restricts or reduces in any way the power or value of a U.S. patent to its inventor diminishes our nation’s competitive edge in the global economy.

    Now, if you want a flat world, where our country loses its preeminent global position and stands behind socialistic, communistic, totalitarian or other such nations, then by all means, let’s sterilize our patent system like the patent systems elsewhere. It seems the three branches of our sold-out government are going in that direction, so let’s follow like lemmings.

    In following, recognize that everything is a trade off:
    The weaker the U.S. patent system is, the fewer inventors, especially independent inventors, those who go on to created the backbone of the American economy and our world strength, the Apples and Microsofts, will publish their innovations, and the more other nations will eat our lunch.

    By all means, let us promote the progress of those nations who are yearning to eat our lunch.
    The Framers of our Constitution would be ashamed of us in the IP community, with our smarter-than-the-average-bear intellects, if we don’t stand up, go to the window and shout, “I’m as mad as hell, and I’m not going to take this anymore!”

    * * * * *
    Lest we forget: A patent without an injunction is like a gun without bullets.

  52. “Do I hear political tones in your remark?”

    No, just a reminder that jingoism is jingoism, even if you say it’s not. That’s all.

    “Did you forget that we are at war, under constant threat of attack on our homeland from religious crazies, the worst kind of fanatics?”

    But surely the enemy is weakened after the death of its leader, Jerry Falwell.

  53. Dear Lonnie E. Holder,

    I enjoy reading and re-reading your comment:
    “Another way of looking at this is that we are comparing a system that focuses more on the rights and responsibilities of individuals (the U.S.) rather than a socialistic or communistic system (from whence the “provincial” comment arose).

    “The U.S. system appears to be predicated on the responsibility of an individual inventor to describe his invention and take responsibility for his invention. … A better question would be which system creates the better patents.”

    I also like this question, and I love the implications:
    Does a strong patent system, e.g., a system with “testosterone,” create a strong country?
    Yes.
    America’s patent system is the strongest, and our patent system strength has historically contributed to our leadership in technology, our financial strength and our premier global position.

    Dear Malcolm,

    Re: “Have you checked your calender lately? It’s 2007, not 1984.”

    Do I hear political tones in your remark? I thought we agreed not to talk about politics or religion.

    Did you forget that we are at war, under constant threat of attack on our homeland from religious crazies, the worst kind of fanatics? I keep thinking about WWII. Could we have won if all American’s didn’t chip in?, from Rosie the Riveter to the mob whacking saboteurs on our docks?

    The technology feared in 1984 is in fact sniffing out WMD at our sea and air ports – you got a problem with that?

  54. “As a “fellow U.S. citizen,” wake up: We do care. We have to care. We’re Americans. We all have a duty to our country. Historically, and for good and just cause, the world looks to us Americans for leadership. That may be patriotic, yes, but that’s not “jingoism.”

    Have you checked your calender lately? It’s 2007, not 1984.

    Or maybe it’s both.

  55. Dear U.K. Patent Attorney,

    I also am confused about the employment circumstances of the inventors. However, no matter what those circumstances were, favorable or not for whomever, they were not put before the BAPI or the district court, and therefore were not proper subject matter for the CAFC. As it should, therein lays the controlling issue behind the CAFC decision.

    Dear DJF,

    Your first comment included:

    “The provincial aspect of U.S. patent law rears its ugly head again. … this decision seems to have cost many foreign-originating U.S. patents their foreign priority. Seems like the CAFC could have been a little more forgiving here, instead of announcing to the rest of world, yet again, ‘We don’t care. We don’t have to. We’re the U.S.A.’”

    Clearly, you had no reservation about venting your anti-American patent system sarcasm repeatedly in your comment. And, after reading with the Supremacy Clause afresh, for you to suggest a second time that an American court can chose to ignore procedural constrains scares the red-blood out of me.

    Be that as it may, for you to assert that my (alleged) jingoism, by way of reply to your offensive sarcastic anti-American remarks, illustrated another aspect of U.S. provincialism, adds insult to injury.

    As a “fellow U.S. citizen,” wake up: We do care. We have to care. We’re Americans. We all have a duty to our country. Historically, and for good and just cause, the world looks to us Americans for leadership. That may be patriotic, yes, but that’s not “jingoism.”

    Being on top isn’t everything, but it is the American thing, and that is something to be cherished over here.

  56. Maynard, I believe that the headline is a logical conclusion drawn from the statements of the case (including the two statements that I quote in this short analysis).

    CAFC: To claim priority, foreign application must be filed by inventor or someone ‘on behalf of’ inventor at time of filing;
    CAFC: It is logically impossible to file ‘on behalf of’ inventor without inventor’s knowledge or consent;
    Therefore: If the foreign application is not filed by the inventor, it must be done by someone working with the knowledge or consent of the inventor at the time of filing.

  57. A humble comment … The title of this post is not logically equivalent to the CAFC’s statement: “[A]n entity could not have filed a foreign application ‘on behalf of’ an inventor without the inventor’s knowledge or consent.”

  58. I am confused. Were the inventors Cragg & Dake not employed by MinTec at the time the European applications were filed, given that the board says “no legal relationship existed between MinTec and Cragg, nor was MinTec acting on behalf of Cragg”? I can’t seem to work this out from the decision.

  59. Another way of looking at this is that we are comparing a system that focuses more on the rights and responsibilities of individuals (the U.S.) rather than a socialistic or communistic system (from whence the “provincial” comment arose).

    The U.S. system appears to be predicated on the responsibility of an individual inventor to describe his invention and take responsibility for his invention. Some foreign (non-U.S.) systems seem to allow an individual inventor to disappear once the invention has been created. A better question would be which system creates the better patents: The system where a corporation can say whatever it wants to about an invention or the system where an individual has to affirm the facts and details about his invention? The U.S. has made their choice, and other countries have made theirs.

    Choosing words like “provincial” merely adds inflammatory emotion to a discussion that would be better predicated on a factual discussion of the advantages and disadvantages of the systems.

    Incidentally, not that this is relevant to any particular topic, but you people should know that the University of Missouri at Columbia is a rocking school.

  60. Dear DJF,

    Be honest with yourself; if you represented Medtronic, and the CAFC

    “… try[ed] very hard to find a reason to allow the [Scimed] argument to be made on appeal …”

    wouldn’t you feel screwed and scream bloody murder?
    Now, therefore, do you still stand by your comment:

    “it doesn’t change my conclusion that this case is another example of U.S. provincialism.

  61. Dear DJF,

    It may be ok by you for a U.S. court to arbitrarily, capriciously or whimsically bend prevailing laws. However, Article. VI, Clause 2 of the United States Constitution says in part:

    “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; … shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.”

    Anyway, it is nice to see that you are coming around and agree with me at least in not-so-provincial part.

    Dear dms,

    Yes, I may or may not be 15 at heart, but I that doesn’t mean my comments don’t hold water. Until you read the decision and can comprehend the issues, I suggest you clam up.

  62. DJF– You said you prefer to file a provisional application as the priority application due to 102(e) considerations. I am interested in this approach but can you please explain a little more the 102(e) benefit of this? Thanks.

  63. Dear EP,

    Thank you for your comment. I read the decision yesterday.

    This CAFC decision was not only consistent with U.S. laws, and the CAFC bound to rule just as it did, this decision was also quite comprehensive and addressed issues DJF raised with his rather offensive remarks.

    The point I tried to make in my comment is that “… theories of [foreign] constructive trust and equitable assignment” were neither before the district court nor the CAFC. Therefore, both courts were silent with regard to possible but un-argued “… theories of [foreign] constructive trust and equitable assignment.”

    However, addressing the broad spectrum, CAFC pointed out the following in the paragraph above the penultimate paragraph (my capitalization emphasis added)

    “In other words, while the foreign application must obviously be for the same invention and MAY BE FILED BY SOMEONE OTHER THAN THE INVENTOR, SECTION 119(A) ALSO REQUIRES THAT A NEXUS EXIST BETWEEN THE INVENTOR AND THE FOREIGN APPLICANT AT THE TIME THE FOREIGN APPLICATION WAS FILED. Indeed, as a matter of pure logic, an entity could not have filed a foreign application ‘on behalf of’ an inventor without the inventor’s knowledge or consent; that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here. Therefore, to the extent that there may have been any uncertainty or ambiguity in Vogel, we now explicitly hold that a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.”

    The “pure logic” about which the CAFC speculated is not/would not be controlling, and would be subject to circumstances raised by a possible future litigant(s) in his (their) argument(s). Indeed, the specific point DJF rudely raised (and Deer too), i.e.:

    “In many foreign jurisdictions, the employer is by operation of law the owner of IP developed by the employee during the course of, or as a result of, his work for the employer”

    would meet the 119(a) requirement pointed out in the CAFC decision, i.e.:

    “… section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed.”

    The relationship between an employer and employee is, of course, at least a nexus.
    Again, thank you for your comment.

  64. JAOI:

    Did you read my post, the part that says,

    “it seems from the end of the decision that SciMed tried to raise this issue but was procedurally prevented from doing so for not having raised it before the PTO board” ?

    The CAFC may have felt procedurally constrained to ignore the question of whether the French company was the owner of the priority applications under French law, and in general I’m in favor of courts exercising such restraint rather than making up law. But even if that’s what transpired here – and it’s possible the court didn’t feel constrained but just didn’t try very hard to find a reason to allow the arugment to be made on appeal – it doesn’t change my conclusion that this case is another example of U.S. provincialism.

    SciMed (or its predecessors) thought they had good Paris Convention priority, and in the rest of world, where first-to-file prevails, and where often the employer owns the invention by default, they’d be right, and would prevail against the two competing applications. (It would be interesting to see if in fact this is what transpired elsewhere, but I’ll leave it to someone else to look it up.) But in the good ol’ U.S. of A., the legal system says to SciMed, Fooled ya! Our laws are different from everyone else’s laws, so even if we’re a signatory to an international treaty, we can do things our own way when it comes to implementing that treaty.

    I agree that in view of this decision, anyone having to argue priority of invention before the BPAI would be foolish not to assert some sort of ownership of the foreign priority application at the time it was filed.

    Anyway, as a fellow U.S. citizen, I thank you for making the ad hominem attacks and adding the jingoism at the end of your post – you did a better job than I possibly could have of illustrating another aspect of U.S. provincialism.

  65. JAOI

    “sickly anti-american attitude”.
    “We are the USA and we care about that even if you don’t”

    How old are you? 15?
    This board is for grown-ups only. Please do not make any more posts.

  66. What I also meant to say was that the provincial aspect is related to the fact this problem won’t happen anywhere else other than in the US because outside the US, the applicant can be anybody entitled to the invention.

  67. JAOI

    I think the point regarding the provincial aspect of US law relates to the fact that the US is the only country where the inventor has to be the applicant. For the rest of the world, the applicant can be anybody entitled to the invention, i.e. the employer.

    Thus, in most foreign based applications, the applicant will not be the inventor, but the company the inventor works for.

    Thus this decision means that subsequent US applications will not be able to claim priority from initial applications where the applicant is the company and not the inventor, which could cause a number of problems. If that is the case, then this can’t be considered to be a good decision.

    I should point out that I have not read the case, and would be grateful if someone would explain if and why this understanding might be wrong.

  68. Re: “The provincial aspect of U.S. patent law rears its ugly head again.”

    Dear DJF,

    With all due respect, I disagree, to say the least.

    As I read it (apparently you didn’t), the penultimate paragraph of the CAFC Decision made clear that “… theories of [foreign] constructive trust and equitable assignment” were not argued at the Board of Patent Appeals and Interferences (although the “overarching legal issue was presented below”). Moreover, these theories, whether or not applicable here, were waived by the parties by stipulation at the district court level. Thus, the CAFC was bound by U.S. law to rule just as it did.

    Are you under the mistaken impression that the litigants in this case could have waived the right for future litigants to argue “… theories of [foreign] constructive trust and equitable assignment” at the BPAI level? That doesn’t seem reasonable. I fail to see why on earth a BPAI litigant in the future would be so constrained.

    As you can see, the suggestion you advance, “Seems like the CAFC could have been a little more forgiving here…” has no plausible place here, none whatsoever. In the broader spectrum, more importantly, are you suggesting that any court, or just provincial U.S. courts, can arbitrarily, capriciously or whimsically bend prevailing laws? With all due respect, what planet do you come from?

    I think you’ll be able to appreciate why I don’t think “The provincial aspect of U.S. patent law” has reared its head, ugly or not (you are entitled to your opinion), again. Nor do I think the tone of you sarcasm is warranted – I’d look into that sickly anti-American attitude. At the risk of being offensive, who the hell are you anyway? We are the USA and we care about that even if you don’t.

    Please show the courtesy of due respect, minimally, for the rule of American law.

  69. DJF: I couldn’t agree with you more. BTW, however, at least in Israel, an employer is the legal owner of an employee’s IP if developed by the employee during the course of, AND (not or) as a result of, his work for the employer (unless other agreements have been made).

  70. The provincial aspect of U.S. patent law rears its ugly head again. In many foreign jurisdictions, the employer is by operation of law the owner of IP developed by the employee during the course of, or as a result of, his work for the employer. Thus in many instances, under local foreign law, there’s no need to execute an assignment to the employer at the time the foreign priority application is filed – the employer (usually a company) can just file the application in the employer’s name, since by law it is the owner of the IP. It’s not clear that this point was sufficiently argued before the CAFC – it seems from the end of the decision that SciMed tried to raise this issue but was procedurally prevented from doing so for not having raised it before the PTO board – but as it stands, this decision seems to have cost many foreign-originating U.S. patents their foreign priority. Seems like the CAFC could have been a little more forgiving here, instead of announcing to the rest of world, yet again, “We don’t care. We don’t have to. We’re the U.S.A.”

    I’ve always advised my clients, domestic and foreign, to file their priority application as a U.S. provisional application, primarily out of 102(e) considerations. This decision gives me one more piece of ammo for making that argument: 35 USC 119(a) won’t come into play, and the application will be filed in the name of the inventor, so there won’t be any question that the application was filed on behalf of the inventor. Alternatively, if they’re going to insist on filing abroad first, they should file in the name of the inventor(s) and thereafter formally assign the priority application to the employer.

Comments are closed.