News

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: This e-mail address is being protected from spam bots, you need JavaScript enabled to view it

Remember Paris? – The decision in Edwards Lifesciences AG v. Cook Biotech Incorporated clarifies the conditions that must be met for a priority claim to an earlier application to be validly made.

A recent UK High Court decision highlights the importance of the Paris Convention to patent applicants wishing to make a valid priority claim from an earlier-filed patent application. The decision is also relevant to the issue of priority claims in trademark and design matters.

In summary, an applicant for a 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 (in the sense of being the same legal person), 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 therefore be made by all of the joint applicants, or the successor in title to all of the joint applicants. An assignment of rights executed after the date on which priority is claimed does not retrospectively make the priority claim valid. 

The Case

Edwards Lifesciences AG v. Cook Biotech Incorporated ([2009] EWHC 1304(Pat)) was an action instigated by Edwards, who sought revocation of Cook’s European Patent EP (UK) 1 255 510. This European Patent claimed priority to the date of an earlier-filed US patent application. Crucially, a relevant publication had been made within the priority period and the validity of Cook’s priority claim was in dispute. As Mr. Justice Kitchin, the presiding judge, stated; “The priority dispute is an unusual one and depends upon the proper interpretation of Article 4 of the Paris Convention.”

The US priority application in question was filed in the names of three joint inventors, Mr. Obermiller, Mr. Osse, and Ms. Thorpe. Obermiller was an employee of Cook, but Osse and Thorpe were not. At the end of the priority year, Cook filed International Patent Application No. PCT/US01/03095, designating Europe. After the patent application had been filed, but before it was granted, Mr. Osse and Ms Thorpe assigned their interests in the patent application to Cook.

Edwards claimed that priority could not be validly claimed in these circumstances, and the Judge, Mr. Justice Kitchin, had to consider what entitlement the applicant for the later filed application had to claim priority from the first filed US application.

Mr. Justice Kitchin determined that the law applicable to priority entitlement for European patents and UK patents is Article 4 of the Paris Convention. Interpreting the effect of Article 4, he stated;

Cook presented two arguments for their claim of priority being valid.

(2) Cook argued that they had always owned Mr. Obermiller’s interest in the priority application by virtue of his employment; therefore the priority claim was good.

Mr. Justice Kitchin dismissed the first argument, stating that the right to claim priority and the right to the grant of a patent are separate issues. Furthermore, Article 4 of the Paris Convention does not concern itself with the right to be granted a patent, only with right to claim priority. With regard to the second argument, Mr. Justice Kitchin decided that the earlier US application was filed in the names of Obermiller, Osse, and Thorpe as joint inventors. These three were, therefore, the “person” who had “duly filed an application for a patent” according to the Paris Convention and they were the person who had the right to claim priority. Obermiller on his own did not have the right to claim priority and, therefore, neither did Cook. The priority claim was denied, and the patent was found to be invalid.

What does it mean for applications in future?

The decision interprets the Paris Convention as requiring a strict identity between a “person who has duly filed an application for a patent…or his successor in title” and the applicant for a later patent application that claims priority. If the earlier application is filed by joint applicants then either all of those joint applicants must be applicants for the later patent application, or the applicant for the later application must be a successor in title to all of the joint applicants. Examples of how this may apply in practice are set out at the end of this note.

There is European Patent Office (EPO) case law establishing that priority can only be claimed by the identical applicant of the relevant earlier application or his successor in title. It is also established that an assignment executed after a later application has been filed does not retrospectively provide the applicant with the right to claim priority from an earlier application. This was Cook’s first argument, and the judge’s decision is consistent with EPO case law. (J0019/87 and T0062/05 are cited in the judgement).

The decision in relation to Cook’s second argument may be of greater concern to patent applicants. Section 5.19 of the UK Manual of Patents Practice states;

The Manual only provides guidance to the law, but in this case the guidance suggests that Cook should have had a valid priority claim. The actual judgment, however, interprets the law more stringently to require that all of the applicants of the earlier application, or their successors in title, must be applicants of the later application. If not, any claim to priority from the earlier application is invalid.

Mr. Justice Kitchin determined that his interpretation was consistent with the EPO case law contained in T0788/05. This Board of Appeal case addressed the issue of what constituted a first application filed by a person for the purposes of claiming priority. Briefly, T0788/05 determined that an application filed by party “A” was a first application for the purposes of claiming priority despite the existence of an earlier application containing the same subject matter filed jointly by parties “A&B”. The reasoning was that “A” was a different person to “A&B”. In Edwards v. Cook this decision has been applied to determine who may claim priority.

Conclusion

It is essential that priority-claiming applications (whether for a patent, registered trademark, or registered design) are filed in the name of a properly entitled legal person. If priority is not claimed by the identical legal person who filed an earlier application, or if there is not a clear transfer of rights from that person to a later applicant, then the right to priority is likely to be lost irrevocably.

Particular care needs to be taken where an earlier application is filed in the names of individuals and a later, priority-claiming, application is filed in the name of a corporation.

Ideally, a clear assignment of the right to file a patent application should be obtained before a first application is filed.

An applicant’s right to claim priority should be reviewed before filing any later application that claims priority from an earlier application. 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.

It is important to note that an invalid priority claim may be impossible to correct later in proceedings.

Examples: The following examples are provided to illustrate the requirements for claiming priority in the UK and Europe according to Edwards v. Cook.

Example 1: A first patent application for an invention is filed jointly by individuals Alice and Bob. A second patent application for the same invention is later filed by company X

(a) If company X is a successor in title to both Alice and Bob then X can validly claim priority for the second application from the first application.

X will be deemed to be a successor in title if the rights in the invention automatically vest in company X, for example if Alice and Bob are employees subject to UK law and the invention was produced in the normal course of work, or if there is a valid assignment to X from both Alice and Bob that includes the right to claim priority and that was executed prior to X filing the second application.

Caution is required where Alice and Bob are employees of X in a territory that does not automatically provide for employer entitlement. In such territories the right of X to claim priority will depend on the employment contract between X and Alice and Bob.

(b) If X is a successor in title to Alice but not to Bob, then X cannot make a valid claim to priority. It will not change the situation if there is an assignment after the date of filing the second invention, X must have the right to claim priority as of the date priority is claimed. This is effectively the situation in Edwards v. Cook.

Example 2: A first patent application for an invention is filed jointly by individuals Alice, Bob, and Charlie. A second patent application for the same invention is later jointly filed by Alice & Bob.

(a) If Charlie has assigned rights in the invention, including the right to claim priority, to both Alice and Bob, and the assignment is executed prior to the filing of the second application, then Alice and Bob can validly claim priority.

(b) If Charlie has not assigned any rights then Alice and Bob cannot validly claim priority as they are not the same “legal person” as the combination of Alice, Bob, and Charlie.

Example 3: A first patent application for an invention is filed jointly by individuals Alice & Bob. A second patent application for the same invention is later jointly filed by Alice, Bob, and Charlie

The outcome of this scenario is not completely clear. The Edwards v. Cook decision would suggest that Alice & Bob is a different person to Alice, Bob, and Charlie and therefore priority cannot be validly claimed. A later application may have additional inventive subject matter provided by Charlie, and the inability for a valid priority claim in these circumstances would appear unreasonable to parties Alice and Bob, who are still involved.

The Guidelines for Examination in the European Patent Office, A-III-6.1, suggests that in these circumstances a valid priority claim can be made. Although such Guidelines are not binding, we suspect that the court will be reluctant to rule that contributions to an invention made by additional inventors within the priroity year invalidate the priority claim in its entirety, and that further case law will clarify this issue in due course.

Dr Alan Bates

[Cambridge office]

If you have any queries regarding this case or require any other information about us please contact your usual Reddie & Grose Partner or Briget Harrison, Marketing Manager:

Email: This e-mail address is being protected from spam bots, you need JavaScript enabled to view it

The European Patent Office ("EPO") has recently announced a series of rule changes that are due to come into effect on 1 April 2010. However, many of the changes will affect existing European and PCT applications, and those that are filed in the next year.

The main effect of these changes is to limit the period for filing divisional applications, and to require applicants to respond to objections at an earlier stage during the prosecution of applications.

This note provides a summary of the rule changes and preliminary considerations to be taken into account. More detailed advice on specific cases will follow as required.

Divisional applications

It is currently possible to file a divisional application at any time whilst the parent application on which it is based is pending (i.e. before the parent application is granted or refused).

Under the new rules (amended Rule 36), after 1 April 2010 it will only be possible to file a divisional application until the later of two years from issuance of the first office action issued in respect of the earliest European application in the family for which an official action has issued, or from the initial specific lack of unity objection on any European application in the family. It will still only be possible to file a divisional application if the application from which it is divided is still pending.

The new rules will apply to all cases, including pending applications on which official actions have already issued. However, there will be a grace period until 1 October 2010 within which to file a divisional application.

Search Procedure

Some years ago, a rule was introduced that precluded the inclusion of multiple independent claims of the same claim category (for example multiple independent apparatus claims) except where these covered interrelated products, different uses of a product or apparatus or alternative solutions to a particular problem that could not be covered by a single claim. This rule was applied during substantive examination of applications.

Under the new rules (new Rule 62a), objection to the inclusion of multiple independent claims can be raised by the search examiner. Where such an objection is raised, the applicant will be required to elect which of the claims are to be used for the search. During substantive examination, unless it is shown that the search examiner was wrong in raising the objection, it will only be possible to maintain claims that have been searched. Applicants will therefore be forced to elect only one independent claim of each claim category, other than where the exceptions apply, early in the search procedure.

It is sometimes the case that the European search examiner considers that it is not appropriate to carry out a search, for example where the claimed invention is considered to relate to subject matter excluded from patentability. At present, the EPO will issue a communication stating that no search has been carried out. If the objections are addressed during substantive examination, the EPO will carry out a search at that time.

Under the new rules (Rule 63), the search examiner should set a two-month term for the applicant to file a statement as to what should be searched, and this may allow at least a partial search to be carried out.

Responses to Written Opinions

When the EPO carries out a search, either for a normal (non-PCT) application or for a PCT application where a supplementary search is required (a PCT application not searched by the EPO in the International Phase), an extended search report is issued including a written opinion. At present, there is no requirement to respond to the written opinion until the substantive examination has commenced. If no response to the written opinion has been filed, the EPO will issue a communication setting a four-month term for responding to any objections raised previously. This means that applicants currently have at least 6 months, and normally at least 1 year, from issuance of the search report before they need to respond to any objections raised.

Under the new rules (Rule 70a), it will be necessary for the applicant to respond to the written opinion, otherwise the application will be deemed withdrawn. For normal (non-PCT) applications, the term for response will be six months following the publication of the European search report. For ex-PCT applications where the EPO issue a supplementary search report, the term for response will be a term set by the EPO. This term is likely to be the same term as that set for confirming that the application should proceed to examination, which is currently only two months!

This requirement will apply in respect of any application for which the search report is issued after 1 April 2010.

For Euro-PCT applications where the EPO has acted as the International Searching Authority (or International Preliminary Examination Authority), it will be necessary to file a response to any objection raised in the written opinion (or International Preliminary Examination Report) soon after entering the Regional Phase. The EPO will set a term for filing the response, which will correspond to the current one-month term set by the EPO inviting the applicant to make amendments to the claims and to pay any excess claims fees. This requirement will apply to any case where the current invitation to amend the claims and pay excess claim fees has not issued before 1 April 2010.

Opportunity to Amend

Applicants currently have the right to amend an application once after issuance of the search report and prior to substantive examination, and again during substantive examination. Any further amendments require consent of the Examining Division.

Under the new rules (Rule 137), applicants will only have the right to make amendments when responding to the written opinion as noted above. Any further amendments, for example any amendments during substantive examination, can only be made with the consent of the Examining Division.

Considerations

For any currently pending European applications where an official action has been issued, and for any existing divisional applications which are based on an earlier application for which an official action has issued, it will be important to consider whether any further divisional application may be required. Any further divisional application will need to be filed before 1 October 2010, or two years from issuance of the first office action on the earliest case if later.

If it is considered that divisional applications may be required for any currently pending European patent applications, it may be advisable to file these new divisional applications as soon as possible so that at least any additional searches can be carried out before any final decision needs to be made regarding the filing of any further divisional applications in the family.

The EPO regularly do not issue a further official action within 2 years of issuing a first official action. Therefore, it is important to consider the need of divisional applications when responding to a first official action, and not to wait until receiving the response from the EPO to your submissions.

For any European patent applications for which no search has been received prior to 1 April 2010, especially cases where a supplementary search report is awaited, applicants must be prepared to respond quickly to any objections raised in the written opinion. Potentially, applicants may have as little as two months to respond in some cases. It may therefore be advisable to consider requesting acceleration of the search for these cases in the hope of receiving the search report and written opinion before 1 April 2010. This would give a longer period to consider any objections raised in the written opinion and respond to these, since the existing rules allowing at least 6 months to respond would apply.

For any PCT applications being filed now and any filed in the last 6 to 9 months where the EPO act as the International Searching Authority, it is likely to be necessary to respond to any objections raised in the International Preliminary Report on the Patentability shortly after entry into the European Regional Phase. Accordingly, consideration should be given to carefully reviewing the written opinion prior to entry into the European Regional Phase. To assist with this, we strongly recommend that you instruct us as early as possible regarding entry into the European Regional Phase, and that you provide us with a copy of any International Preliminary Report on Patentability issued with your instructions.

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: This e-mail address is being protected from spam bots, you need JavaScript enabled to view it

The European Patent Office (EPO) is planning a number of measures to restrict an applicant’s ability to file divisional applications. A decision of the Board of Appeal casts doubt on what can and cannot be included by means of a divisional application, and new regulations issued by the Administrative Council severely restrict the time in which divisional applications may be filed.

The EPO has generally taken a position against the practice of applicants to file divisional applications during the application process. They regard most divisional applications as attempts to delay the examination process or create legal uncertainty for competitors regarding the wording of the finalised claims.

The new developments follow the EPO’s aborted attempt two years ago to render divisional applications irreparably invalid, should they inadvertently contain added subject matter at their filing date.

Time Limits to File Divisionals

A vote from the EPO Administrative Council has also led to a change in the regulations concerning the filing of divisional applications, and in particular the time limits for doing so.

At the moment it is possible to file a divisional application based on any pending earlier application.  However, as of 1 April 2010 Rule 36(1) EPC will read as follows:

“1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of 24 months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of 24 months from a communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 EPC.”

Under the new rule, an applicant will have two years from receiving an Examination Report on their earliest application to file a divisional unless an objection is raised that an application, and not necessarily the earliest application, claims more than one invention (a unity of invention objection under Article 82 EPC).  In the latter case the applicant gets two years from the unity of invention objection to file a divisional.

The aim of this new rule is to prevent an applicant cascading a series of divisional applications in order to keep an application pending as long as possible.  The EPO hopes that this will prevent applicants waiting to see what their competitors do and then attempting to cover this at a later date by claiming it in a divisional application.

We will have to wait and see what the effects of this rule change will be.  For example, will it be possible to introduce a unity of invention problem into an application to try any obtain an extra two years to file a divisional?

Double Patenting & Divisionals

The EPO does not allow an applicant to obtain two patents for the same invention.  Despite acceptance of the EPO’s general practice to refuse cases on the grounds of double patenting, it was generally thought that there was no direct support in the European Patent Convention for such refusals.

However, in recent decision T_0307/03, the EPO Board of Appeal attempted to derive basis for double patenting objections directly from the wording of the European Patent Convention.  The Board relied upon Article 60(1) EPC, which states:

“The right to a European patent shall belong to the inventor or his successor in title.”

From this wording, the Board decided that under the EPC the principle of prohibition of double patenting applies because the inventor has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim.

The Board went on to decide that a claim in a divisional application cannot overlap with the scope of a claim in a parent application.

In the appeal in question, the applicant tried to obtain protection in a divisional application for a slightly broader concept to that found in the granted parent.  The Board objected to this and said:

“To avoid this objection of double patenting the appellants would have had to confine the claimed subject-matter in the [divisional application] to subject-matter not already patented in the [granted parent].”

The EPO seem to be saying that overlapping scope between parent and divisional applications is not permissible, despite previous Board of Appeal decisions saying the opposite (see T_0587/98 and T_1391/07 for example). 

Whilst a single decision from the Board of Appeal is only binding on the individual case in question, there is a concern that the  EPO will decide to incorporate the principles of  T_0307/03 into the guidelines for practice.  If they do so, this could put an end to strategies such as filing an application containing narrow claims to obtain a quick grant and protection, whilst also filing a divisional application directed to a broader concept.

We eagerly await further clarification from the EPO. Perhaps we will see a referral to the Enlarged Board of Appeal to clarify the situation.

Needless to say, we will be keeping a close eye on the development of the law in the area of divisional applications in the coming months.

If you have any queries regarding this press release or require any other information about us please contact your usual Reddie & Grose Partner or Briget Harrison, Marketing Manager: -