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The
attached briefing note
concerns a UK High Court decision (Edwards v Cook) that has important
ramifications for any IP right pursued in the UK or Europe that claims priority
from an earlier application. In particular, the decision highlights the
requirements that must be met for a priority claim to be valid, and stresses
that these conditions must be met at the latest by the filing date of the later
application in which the priority claim is made.
These
considerations are especially important for US applicants where (for patents)
the earlier application will inevitably be made in the name of one or more
inventors, but the later filed application may be made in the name of an
assignee.
In
Summary;
•
An applicant for an IP right who wishes to validly claim priority from an
earlier application under the provisions of the Paris Convention must be
identical to the applicant who filed the earlier application, or must be the
successor in title to the earlier applicant.
•
Where there are joint applicants for the earlier application then the later
application must be made by all of the joint applicants, or the successor in
title to all of the joint applicants.
•
If there is any difference between the applicant in the earlier and later
applications an assignment in writing needs to be executed prior to filing the
later application. The assignment should explicitly include the right to claim
priority from the earlier application.
•
An assignment of rights executed after the date on which priority is claimed
does not retrospectively make the priority claim valid.
•
For any international IP right that designates the UK or Europe (for example an
International Patent Application, or Madrid Trade Mark application) it is
essential that the applicant’s right to claim priority be reviewed before filing
the International application.
•
It is important to note that an invalid priority claim may be impossible to
correct later in proceedings.
If
you have any queries regarding these rule changes or require any other
information about us please contact your usual Reddie & Grose Partner or
Briget Harrison, Marketing Manager:
Email:
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