Tech Transfer Reports on AIA Drafting Flaw Affecting Thousands of Patents

No idea if this is correct, but figured it deserved a post.  The article asserts that if a provisional was filed in the name of the assignee (applicant), it cannot serve as the basis for a priority claim because the statute says only that a provisional filed by “an inventor” can serve that purpose.  Anyone have insight? Further, the article portrays this as affecting only universities, but one would think a broader impact more likely?

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

18 thoughts on “Tech Transfer Reports on AIA Drafting Flaw Affecting Thousands of Patents

  1. 4

    I am not sure how this problem cloned stem from a drafting flaw of the AIA. The AIA did not change that to claim priority to another application, the other application must name a common inventor. Has anyone figured out the link with AIA?

      1. 4.1.1

        The drafting in question seems to be in 35 USC 119 (e)(1), and stems from before the AIA: the right to claim priority attaches to a non-provisional application “by an inventor or inventors named in the provisional application”. But as far as I’m aware, before the AIA it was not possible to file an application without naming inventors, so it wasn’t an issue. The drafting flaw, then, is that subsection (e)(1) was not amended at the time of the AIA.

        A similar flaw exists in the foreign priority provisions, both before and after the AIA. For foreign priority one assumes that Congress probably intended to implement the Paris Convention, but the drafting of 35 USC 119 (a) gets it wrong.

        Under Paris Article 4A:
        “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.”

        Thus, according to Paris, the right of priority for a US application should belong to the applicant of the corresponding foreign application, or to the successor or assignee of the foreign applicant. Remember that the foreign applicant will usually be a company, not the inventor himself.

        Yet 35 USC 119 (a) doesn’t say that. It puts it the other way round. It gives the right of priority to the person who filed the US non-provisional application, if he or his assigns filed an earlier corresponding foreign application.

        Pre-AIA, the person filing the US non-provisional was always the inventor. Yet often under foreign law, there is no need for the inventor to assign anything to the foreign applicant company at the time of the foreign application. Indeed, in Europe the inventor does not even need to be identified until 16 months after the original priority application. Does a foreign applicant with a foreign inventor lose priority in the US because he acted in accordance with the applicable foreign law rather than with US law? Does that accord with the USA’s international obligations under the Paris Convention?

        Post-AIA, consider this scenario. Foreign company A files a foreign patent application. It then sells the patent application, and all rights in the invention, to company B. Company B files a US application and claims priority. Is the priority claim valid?

        According to Paris Article 4A, yes it should be. Company B is the successor in title of company A.

        According to a strict reading of 35 USC 119 (a), no it’s not. Company B is only entitled to claim priority if its assigns filed the UK application. But A is not the assign of B, it’s the other way round.

        However, in the past the US courts have fudged the issue to try to obtain a reasonable result, despite what the law says. Rather than asking whether the US applicant’s “legal representatives or assigns” filed the foreign application, they look for some kind of “nexus” between them.

        Even that doesn’t give the result that Paris mandates. See <a href="link to Scientific SciMed v. Medtronic Vascular (Fed. Cir. 2007).

        Here, the CAFC said 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.” (emphasis in original, clearly meaning that Company B can’t claim priority from Company A’s application).


          Sorry, here’s that link again.

          Even that doesn’t give the result that Paris mandates. See Boston Scientific SciMed v. Medtronic Vascular (Fed. Cir. 2007).

          Here, the CAFC said 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.” (emphasis in original, clearly meaning that Company B can’t claim priority from Company A’s application).


          Thanks for the exegesis.

          Clearly, the provision in 119(a) would have complied with the Paris Convention had the word been “privies” and not “assigns.” Perhaps the best interpretation of the clause would be to interpret “assigns” to mean “privies.”

          The problem with 119(e) seems unfixable without legislation. It is best advised, therefore, not to have anybody but inventors file an application under 111(a) if they wish to claim the benefit of the filing date of a provisional application.


            Interpretation that changes the clear meanings of words to substitute a word not chosen is no longer interpretation.

            This needs a legislative fix – let’s stop trying to invoke the judiciary to act beyond their proper powers.


              I agree. It could be done at the same time as the legislative fix of 35 USC 119 (e).

              Anyway, what’s the substantive difference between “privies” and the CAFC’s previous fix, “nexus”? Especially when the CAFC said that it had to apply “at the time the foreign application was filed”.

              The legislative fix that is needed is to follow the wording of the Paris Convention: the right of priority belongs to the person who filed the foreign application, or his successor.

              Though pre-AIA, that might have required an assignment of the priority right, since the US applicant would have been the inventor, not the company that filed the foreign application. This would have mirrored the requirement of some foreign countries that US applicant companies should file an assignment of the priority right from the US inventor/applicant.

              Perhaps this could be avoided if the amended US law states that the priority right belongs to the person who filed the foreign application or his successor, but can be claimed if that person or successor is either the US applicant or is registered in the USPTO as the assignee.


                “Privies” include both parties to the assignment contract so does it make any difference whether the application was filed by the current applicant or by his privy, which could be his predecessor in title.

                1. Ned

                  1. I’m well aware that’s what “privy” means, but how is it any better than the CAFC’s “nexus”? It’s a fudge, rather than getting it right, and it doesn’t agree with the statutory language.

                  2. One particular problem with the CAFC’s “nexus” is that they stressed it had to exist at the time the foreign application was filed. In my example above, were Company A and Company B privies at the time the foreign application was filed? It’s quite possible they didn’t even know of each other’s existence at that time. In fact, Company B might only have been incorporated subsequently, perhaps to exploit the invention.

                2. Let us resume the facts: A (an entity that owns the invention under its national laws) files priority application, B files U. S. application, A assigns the priority application an invention to B prior to the U. S. filing.

                  The statute reads “an application for patent for invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for patent for the same invention…”

                  Clearly, A is a privy of B, but was not so at the time the foreign applications filed. But so what if assigns is treated as privity?

                  I look at the facts of the Boston Scientific case as published in the link, it does not appear that the foreign priority applicant had received assignments from the inventors at the timely filed the priority application and therefore did not actually own the invention at the time of filing of the application for it. In my hypothetical, applicant A owns the invention, filed the priority application, then assigned the application to company B, who then filed in United States. I think this falls clearly within the statute if “assigns” is treated liberally.

                  Do you know more about the facts in Boston Scientific – did the company that trial actually own the invention at the time they filed even though they had not yet received assignments from the inventors?

                3. Ned, you’re not answering my questions.

                  Why is your privity interpretation any better than the CAFC’s nexus?

                  What happens when the courts say that privity must exist at the time of filing the foreign application, as they do for nexus?

                  Two more questions:

                  How will you persuade the CAFC to change from nexus to privity?

                  Since you agree that s119 (e) would have to be fixed by legislation, why not fix s119 (a) at the same time?

                4. Inventors->A->B All are privies.

                  A files priority.

                  Inventors file US.

                  Then B records assignments in US.

                  Until a statutory change, that should be the way it is handled.

                5. Yes, I agree, until there’s a legislative solution that’s the best workaround. It relies on the CAFC’s nexus interpretation, but wouldn’t work in the Boston Scientific case where the assignment Inventors->A wasn’t in place until later.

                  I don’t know the background of the Boston Scientific case, but I suspect that there were some unusual circumstances that were specific to the case, and that the CAFC was trying to do justice in the circumstances. Unfortunately, hard cases make bad law.

  2. 3

    Who files a provisional without naming inventors? I’ve NEVER done that. Never occurred to me to NOT name the inventors.

    It’s not complicated: file the provisional naming the inventors (and if you like, listing the non-real-person applicant as well), record an assignment from the inventors to the applicant that includes assignment of downstream cases, then eventually file a PCT…which will also list the inventors as such for purposes of the USA and the applicant for everywhere else.

    Why would it cross anyone’s mind to do otherwise?

    1. 3.1

      I can tell you one reason that you might file a provisional without naming inventors: because you cannot agree on who they are. I have seen it happen that there is a joint research agreement between two companies, and the contract language says something like “company A shall own any patents on an invention made by an employee of company A, while company B shall own any patents on an invention made by an employee of company B. Where employees of both companies are inventors, as defined under U.S. law, both companies shall own patents jointly.”

      So, the joint research project has been in the works for a while, the joint research team has something commercializable and they want to talk about it at some big industry trade meeting. You need to get the provisional on file before they give the talk, so you call your client (company A) and ask who should be listed as an inventor. The in-house counsel for A says “I don’t know, let me ask.”

      Next thing you know, you are sitting in on a very tense conference call, where A employees politely insist that the contributions of B employees are all in the manner of hands not heads, while the B employees insist with equally cold cordiality that their heads also made contributions. No agreement is likely to be reached on this point before tomorrow, when the provisional has to be filed. So, you compromise by not listing any inventors (perhaps you do not even write any claims, because they disagree on that point as well).

      I am not saying that it is ideal, but I have seen it happen.

      1. 3.1.1

        Thanks for that. But considering a provisional doesn’t require inventor oath(s), why not file the same thing twice on the same day, once listing just inventors from A and once listing from both A and B? Then sort it out in the priority year.

  3. 2

    From what it says, it’s a university-based practice, which seems very odd in two ways: why only them, and why them? Was there some government form out there that was used, and is used by other entities, or some regulation, or..? Makes no sense on multiple levels!

  4. 1

    David, how in the world? I had no idea that anyone would even think to file a provisional without naming all possible inventors.

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