Don’t break the chain – ensuring valid claims to priority based on US patent filings has become easier.

Guest Post by Alex Korenberg of Kilburn & Strode (UK)

The Paris Convention (and its implementation by the EPO and UKIPO) requires that the person filing a priority claiming application is the same as the person who has filed an application from which priority is claimed, or his or her successor in title. This has in the past caused problems for US based applicants on several occasions, since a mismatch cannot be fixed retrospectively.

The problematic fact situation was that the chain of title from the inventor(s) on the US priority application to the applicant (e.g. assignee company) on a priority claiming second application (e.g. a PCT application) could not be established at the second (e.g. PCT) filing date. The result in several UK court cases and EPO Board of Appeal decisions was that the claim to priority was found to be invalid, leading to a loss of the patent due to intervening disclosures in the priority year (see here http://www.kilburnstrode.com/resources/news/2011-4-21-ensuring-valid-priority-claims-for-us-originating-applications for a briefing note describing this issue in more detail). The only way to be certain the chain of tile was in place was to have assignments in place from all US applicant/inventors to the applicant on the second application prior to filing it.

The implementation of the provisions of the AIA now provides a convenient way for US patent filing companies to ensure this issue does not affect their foreign filings, making use of the ability to file the US application in the name of the assignee company, rather than the inventors. By filing in the name of the assignee company, there is then no question as to the chain of title in relation to the priority claim for a subsequent PCT or other foreign application filed in the same name. Unlike the entitlement to claim priority, the entitlement to grant of a patent can be settled in Europe after filing and at any time before grant, or even after grant by appropriate assignment. Using the provisions of the AIA to file in the name of the assignee company, the question of assignments from the inventor to the assignee company ceases to be a potentially fatal issue if not settled during the priority year.

The interaction between an invention’s chain of title and the ability to claim priority has been a niche pursuit for aficionados of the nether regions of patent law, but this may be one point where the harmonisation of patent law as a result of the AIA can provide readily available benefits for US patent filers. Of course, the complexity of the interaction of earlier inventor filed applications and the Paris Convention will still be around to keep lawyers busy for years to come.

30 thoughts on “Don’t break the chain – ensuring valid claims to priority based on US patent filings has become easier.

  1. Really Malcolm, are you that desparate to troll that you trot out this nonsense on a thread almost a full week old?

    Tell me about spam control on your emails. You still haven’t done this yet.

  2. There really are some here who come to learn as well as teach.

    Why don’t you teach everybody again how to train mail room staff to screen registered letters addressed to attorneys so that letters containing prior art relevant to a patent application can be thrown away without the attorney learning of them?

    Tell everybody about how well that works, anon. Also please name a single firm that uses such a screening system and let us know the name of their insurance provider. We all thank you in advance for your wisdom. You are the expert on this subject, after all.

  3. I’m a bit concerned that the wording of 119(e)(1)which relate to an application “by an inventor or inventors named in the provisional application” and 35 USC 120 which relates to an application “which names an inventor or joint inventors”. I’m not convinced that an Assignee can have a valid priority claim – even though authorized to file under 35 USC 118. The priority statutes STILL relate to inventors – not “Applicants”.

  4. Thanks again, “different UK atty”. Now I’ve skimmed the old 2007 thread. Amusing to see old acquaintances there like JAOI(TM). The Link to the Decision no longer works but the thread alone was enough.

    Rader CJ just urged us all to pay attention to the statutory language. This is just what was urged on me when I first started in this profession. Robin Jacob used to express his exasperation when the parliamentary draftsman insisted on tinkering with the wording of the EPC. So it is, that one looks at these various Paris Convention priority cases and thinks it would be a lot easier if the legislator had adopted Paris 4A verbatim.

  5. In the US, throw into the mix that employment law is state by state, and that many small corporations may not be savvy enough to have ‘proper’ assignment clauses in their employment agreements – e.g. Stanford, and that these small corps may be acquired later by larger corporations, who may not be diligent, or if state law does not allow, may not be able to alter existing employment agreements, it becomes far more tricky.

    There is a method to my madness for posing the hypothetical.

  6. Ah yes. Indeed, BSX v Medtronic. I will look it up and revert. It is tricky enough when every inventor is an employee working under a contract of employment. But when there is more than oine inventor, and one at least is a consultant rather than an employee, it can get quite tasty.

  7. I think you mean Boston Scientific SciMed v. Medtronic Vascular.
    link to patentlyo.com

    I thought at the time that it didn’t comply with the USA’s obligations under the Paris Convention. The CAFC held that under 119(a), the foreign priority application had to be filed with the knowledge and consent of the inventor, at the time of filing. There’s no requirement for that in Paris.

    All that’s required under Paris is that the earlier priority application is “duly filed” under the laws of the country concerned. Yet the CAFC held “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.”

    In fact, as came out in the comments in the thread, in some countries (including UK) a patent application can be filed quite legitimately without the inventor’s knowledge and consent at the time, as long as the legal ownership of the invention is sorted out before the patent is granted.

    I think that the SciMed court was influenced by a desire to uphold the inventor’s natural right to his invention. Dennis’s post says “Under the court’s ruling here, 35 USC 119(a) provides a personal right to the inventor.”

    So it is not clear to me how this would have been decided post AIA, now that US law no longer requires the inventor to be the US applicant. Note that section 119(a) does not actually refer to the inventor.

    My hypothetical, where original applicant A subsequently assigns all rights to applicant B, is no doubt a business situation that in principle would be encouraged in the USA and if possible facilitated by the US courts, if it helped to develop and exploit an invention profitably for both parties.

    However, SciMed seems to require that A filed the original UK patent application with the knowledge and consent of B. Yet at the time of the original filing, A should have been keeping the invention confidential, and quite possibly neither A nor B knew that the other existed.

    I got the impression that there was probably a whole pile of unusual factual circumstances underlying this SciMed decision, so it may have made sense in the case concerned. But if so then those factual circumstances didn’t come out in the decision, and it appeared to have more general applicability. Which means that there could be harmful consequences if the decision were taken as a precedent in future cases with more normal circumstances.

    (Disclosure: I was ‘A different UK patent attorney’ in the SciMed comments thread.)

  8. Interesting, IPMan. Common enough situation, that rights are divested during the Paris year, from A to B.

    Me, being not a US lawyer, I wouldn’t dare to hazard a guess how a provision of the AIA would be construed by the courts of the USA. Perhaps a comment will come, from somebody competent to do so.

    Until now, under FtI, it has hardly mattered, whether or not the foreign priority date is given full force and effect. But now that PTO filing Dates are of paramount importance, These issues are set to get more interesting.

    And by the way, was there not some interesting debate in the US Courts one or two years ago, about the value of a foreign priority on some medical device invention? That case also involved a trap for the unwary, if i remember right. There was a catchy name for the involved inventor, like da Vinci, Leonardo, Lorenzo or something like that.

  9. Hi jrita

    I have doubts that a *change* of applicant would fix the situation, as this would not affect the identity of the applicant at the time the claim to priority was made. Reading the UK case law, what you would need is a correction with ab initio effect to make the applicant the applicant on the priority application at the time the PCT was filed.

  10. “It would be a bit pointless to debate which is “better” in this regard, 4A or 119(a). First thought though is that 4A is an unnecessary trap for the unwary and that 119(a) is the fairer and more pragmatic way.”

    i think that the EPO/UK interpretation of Paris 4A is an unnecessary trap, but that’s not the fault of 4A itself. You could interpret 4A to allow an assignment of priority right to be executed retrospectively, after the filing of the application which claimed the priority. But the EPO and UK case law doesn’t allow that – and that’s the trap.

    I think that the difference with 119(a) is that Paris 4A gives the priority right to successors in title of the original foreign applicant, but 119(a) doesn’t.

    However, 119(a) instead has an approach which is in one respect more liberal. It allows an inventor-applicant to claim the priority, even though he himself didn’t file the foreign application, and he isn’t a successor in title to the foreign applicant company. That because of 119(a)’s reverse provision that allows for the possibility that the foreign application was filed by the successor in title (assign) of the inventor-applicant.

    Pre AIA, when the US applicant had to be the inventor, that more liberal approach has been enormously important in simplifying priority claims.

    But I can see a problem looming, post AIA. Suppose Company A files an originating UK patent application. A few months later, A assigns all rights to the invention, including the UK patent application and the right to claim priority from it, to Company B. Then B wants to file a corresponding US application in its own name, and claim the priority. Can B do so?

    Under Paris 4A, the answer should clearly be yes. B is the successor in title of A. But under 119(a) the answer is quite possibly no. The original foreign applicant A is not the legal representative or assign of the US applicant B.

  11. I think part of the problem is that US patent attorneys’ understanding is naturally based on the priority provisions in 35 USC 119(a). But 35 USC 119(a) doesn’t correctly implement the Paris Convention, Article 4A.

    It is interesting to see another’s defining of the problem being a country’s national law and the effects of that national law.

    While recognizing the tendency of being “an ugly American,” do you recognize the tendency to confuse poly-nationalism with an ideal that patent law is trans-national? Throughout most of the world, and especially in the U.S., patent rights still are very much a matter of national law, and pertain to rights within a country.

    I would counter with a defining problem that it is assumed that law should be universal. The distinctiveness of American culture of the rugged individual runs deep and cannot be easily dismissed nor ignored.

  12. Coming from the other direction, into the USPTO. Indeed. Another great comment from IPMan.

    I had myself wondered, decades ago, whether the prosecuting patent attorney would need to procure from the client company an assignment from the company to the Inventor, of the right to claim priority under the Paris Convention when applying for a patent (in the name of said Inventor) at the USPTO at the end of the Paris priority year.

    It would be a bit pointless to debate which is “better” in this regard, 4A or 119(a). First thought though is that 4A is an unnecessary trap for the unwary and that 119(a) is the fairer and more pragmatic way.

    In passing, I am wondering if there is anything in the PCT that corresponds to the EPC’s Article 58 “The right to a European patent shall belong to the inventor……”

  13. “… when it comes to the fundamental provisions of the Paris Convention, some US patent attorneys simply don’t “get it”. […] Now the USA has signed up to Paris, undertaking to conform its domestic law to the fundamental provisions of the Paris Convention.”

    I think part of the problem is that US patent attorneys’ understanding is naturally based on the priority provisions in 35 USC 119(a). But 35 USC 119(a) doesn’t correctly implement the Paris Convention, Article 4A.

    Paris Article 4A starts by looking at the applicant of the earlier application. It gives the right to claim priority to the applicant of that earlier application. Or to the successor in title of that earlier applicant.

    So if you file a US application based on an earlier foreign application, the right to claim priority should belong to the applicant of the original foreign application, or to his successor in title.

    But in fact, 35 USC 119(a) is the wrong way round. Instead of looking at the original foreign applicant, it starts by looking at the applicant of the domestic US application.

    It then says that the US applicant has a right to claim priority if he (the US applicant) had filed an earlier foreign application. Or if the legal reresentatives or assigns of the US applicanthad filed an earlier foreign application.

    If the US had a more correct implementation of Paris, then on a strict interpretation, that would have caused problems pre AIA. The US applicant had to be the inventor. The inventor would strictly have needed an assignment of the Paris priority right from the foreign company that filed the foreign application. Then you would normally want to get him to assign the whole US application back to the foreign company.

  14. The thread is marred by gratuitous snideness from MaxDrei and Malcolm.

    Go figure. Yet another example where the red cape of ‘anon said’ affects the little circle members by shutting off their minds and blindly charging toward the cape.

    El toro. You do know the bull does not best the matador, right?

    IPMan,

    Thank you for your considered reply. There really are some here who come to learn as well as teach.

  15. “However, in that event, you could instead ask the US court to order the losing party to execute an assignment, which could be registered in the UK without the need for separate UK entitlement proceedings.”

    Note that the registration of this assignment would only regularise the ownership of the UK national phase of the PCT application. Unless the assignment (or perhaps the court order) happened before the date of filing of the PCT application, I think it still wouldn’t save the validity of the priority claim.

    The Paris Convention right to claim priority belongs to the applicant who filed the earlier case, even if he wasn’t entitled to file it. The EPO and UK case law means that this right to claim priority has to be assigned to the PCT applicant before the PCT application date.

    I suppose there might be an argument that the earlier application wasn’t “duly” filed (in the words of Paris Article 4), because the applicant wasn’t entitled to file it. But that would mean that no-one was entitled to claim its priority.

  16. Nice piece. Thanks Alex, thanks Dennis.

    The comments thread is helpful too, for revealing that when it comes to the fundamental provisions of the Paris Convention, some US patent attorneys simply don’t “get it”.

    In Europe there is a heirarchy of patent law. National law must conform the the European Patent Convention and, in turn, the provisions of the EPC must be in conformity with Paris. That is to say, Paris tops the lot.

    Now the USA has signed up to Paris, undertaking to conform its domestic law to the fundamental provisions of the Paris Convention. You know, comity, that sort of idea.

    Clients therefore would expect the competence of US patent attorneys to extend to a basic grasp of the provisions of the Paris Convention. Those lacking it will no doubt be grateful to Alex, Dennis and, even more so, “IPMan” above.

    I don’t know about “a bit unlikely” IPMan. English understatement, perhaps. Anon’s hypo on his entirely different legal issue (simultaneous filings by employee and employer on the identical subject matter on the identical date) might occur once in a blue moon. But what Alex writes about could be happening all the time, in routine practice, and so will likely (as Alex observes) provide solid basis for litigation outside the USA for at least the next 15 years.

    Think: how many times do American employers file PCT in the name of the Corporation, claiming Paris Convention priority from a domestic USPTO filing in the name of the inventor? In what proportion of those PCT filings does Employer take the trouble to secure from Employee Inventor, before filing the PCT, an Assignment of the Right to Claim Paris Convention Priority? I had thought that too was routine good practice, but can I count on that being the case?

    So, thanks again, for running the piece and alerting those who had not yet understood the danger.

  17. “Multinational Corp has a worker in the US who makes an invention. Multinational Corporation has incorrectly assumed that it has a right to the invention of this worker […] Unknowingly to each other, each of the actual inventor and Multinational Corporation file PCT applications with the US receiving office on the same day. What happens next?”

    An interesting question, but not the one that Alex’s original post addressed. In fact, there are several separate issues here.

    Alex’s post was about who has the right to claim priority from an earlier application. The answer is clear from the Paris Convention, Article 4. The right to claim priority belongs to the person or company that filed the earlier application, or his/their successor in title.

    So if Multinational Corp filed the earlier application in their own name, they have the right to claim priority from it. If the inventor filed the earlier application, and hasn’t assigned the right to claim priority, then Multinational Corp does not have the right to claim priority.

    This is quite separate from the ownership issue you have raised – is it Multinational Corp or the inventor which owns the rights to the invention, and is thus entitled to be granted a patent for it?

    The ownership question depends on the employment contract and the law which governs it – presumably US law (maybe US state law – you tell me).

    In the UK, at least, either side could file entitlement proceedings in the UK Intellectual Property Office, claiming ownership of the other’s patent application as far as the UK designation is concerned.

    But the UK IPO would then need to apply the appropriate law, presumably US law. They would have to ask for evidence from both sides about the applicable law, and make their decision accordingly. Unusual, and I’m not aware that it has ever happened, but I can’t see any reason in principle why it would not be possible.

    So you might do better getting an order from a US court first, saying that you are entitled. Then file that in the UK IPO proceedings. However, in that event, you could instead ask the US court to order the losing party to execute an assignment, which could be registered in the UK without the need for separate UK entitlement proceedings.

    Note that all this is also independent of the question of who filed first. In fact, it could be raised even if only one party filed an application, but the other party claimed to be entitled to it.

    If there were two applications with different filing and priority dates, that could also raise first-to-file novelty issues. However, your hypothetical sidesteps that by assuming both parties filed on the same day, and had no earlier priority date. In the absence of ownership issues (two inventors made the same invention independently and both filed on the same day) then both would be entitled to separate patents. A bit unlikely, though.

  18. Is this a viable fix for an application filed naming an applicant (obligate assignee but no assignment yet recorded):

    1. File amendment to Request with IB under Rule 92bis, changing “inventors” to “inventors and applicants.” Do this prior to national stage entry (and preferably before WIPO publication.

    2. Procure executed assignment thereafter and record.

  19. No apologies needed – a much better post than Malcolm’s (granted, that is not difficult to achieve).

  20. Quite the contrary – and oddly you would be the one challenging a hypo for its connection to a thread – my hypo is extremely germane to a particular point raised by the author, and in fact goes directly to avoiding that trap for the unwary by pointing out that the trap may still be sprung even with the AIA provision – at least in the US under US jurisprudence (See Stanford v Roche).

    I know what my answer would be – and that’s not the point of my posting the hypo. Rather than charging at the red cape of “anon said,” perhaps you care to actually explore the situation?

  21. Or,

    Shift the cost of true examination to the parties involved in any enforcement, and let the rest of the 99.8% of patents not incur that high cost/law value (seemingly) step.

  22. My hypothetical then: a Multinational Corp has a worker in the US who makes an invention. Multinational Corporation has incorrectly assumed that it has a right to the invention of this worker (there are many ways this can happen through various paths such as acquisition of a smaller company that did not have an assignment policy). Unknowingly to each other, each of the actual inventor and Multinational Corporation file PCT applications with the US receiving office on the same day.

    What happens next?

    Why don’t you tell us what should happen? The hypo has little to do with avoiding the trap for the unwary discussed in the post. The passage you quoted is also not “strictly true” (according to your logic) when a second corporation files a PCT application claiming priority to a first corporation’s application using the first corporation’s name (intentionally or inadvertantly).

  23. And if you don’t assign me now
    You will never assign me again
    I can still hear EPO saying you should never break the chain
    And if you don’t assign me now
    You will never assign me again
    I can still hear EPO saying you should never break the chain

    Chain…keeps us together
    (run into the shadows)
    Chain…keeps us together
    (run into the shadows)
    Chain…keeps us together
    (run into the shadows)

    …with apologies to L.B., S.N., M.F, C.M,, J.M.

  24. By filing in the name of the assignee company, there is then no question as to the chain of title in relation to the priority claim for a subsequent PCT or other foreign application filed in the same name

    At least in the US, this is not strictly true, as US law still maintains that only a real person can be an actual inventor (foreign law may differ on this point). My hypothetical then: a Multinational Corp has a worker in the US who makes an invention. Multinational Corporation has incorrectly assumed that it has a right to the invention of this worker (there are many ways this can happen through various paths such as acquisition of a smaller company that did not have an assignment policy). Unknowingly to each other, each of the actual inventor and Multinational Corporation file PCT applications with the US receiving office on the same day.

    What happens next? In the US? In other foreign countries such as GB and DE?

  25. Roufousse

    Thank you for the comment. Apologies for the broken link, this has now been fixed.

    I believe that assignments recorded a the USPTO become part of the public record. As far as the validity of the priority claim in Europe is concerned, however, it is not essential to record the assignment. All that matters is that the chain of title is in place prior to filing the second application and that documentary evidence of that can be produced if challenged.

    Alexander

  26. Alexander,

    Your link points to a K&S page, with the following invitation at the end:

    Please click here to download full copy of the ‘Ensuring Valid Priority Claims for US Originating Applications’ briefing note.

    When I click link to kilburnstrode.com I get a 404.

    I occasionally see in PAIR file wrappers evidence inventors balking at signing assignment papers. Are assignment deeds part of the public record at the USPTO?

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