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What’s your priority?


The question of priority entitlement usually comes up in the following manner: “I am disclosing my new invention tomorrow, can I just fill in a form to file an application at the Patent Office?”

The answer, of course, is no. There is then a frantic dash to file a patent application that will provide at least a chance of obtaining protection and of claiming priority from this application when filing overseas applications a year later. The patent attorney will try to include at least a description of the inventive concept itself (not just of one embodiment of the concept), including some broad language and preferably one or more claims. Priority can then be claimed for overseas applications filed within a year for the subject matter disclosed.

What happens, though, when two parties independently have this dash to the Patent Office and we end up with overlapping dates? One application has an earlier priority date than another, but is published after the priority date of the other. Such a situation is dealt with in the UK and European Patent Offices under the ‘novelty only’ prior art provisions. In short, the inventive concept in the later application must have novelty over the earlier application, but does not need to show inventive step. This provides fairness – both parties will likely be able to obtain some protection, but the later party will need to demonstrate at least a minor difference (novelty).

So far so good, but what if the earlier application is not legally entitled to priority? What if the dash to file the earliest case ended up with naming the wrong parties, or failing to properly transfer rights between inventor and applicant? In this case, the earlier applicant would not be entitled to priority and the earlier application would not be ‘prior art’ at all.

Precisely this point was considered in a court case this summer. Faced with apparent ‘novelty only’ prior art as described above, the patentee argued that the party seeking to revoke their patent had not proven that such prior art was legally entitled to priority. As such, they said, it could not be considered as prior art at all. If this line were followed, it would be very difficult to assert novelty only prior art. Providing proof would involve investigating one or more of the following: an inventor’s employment and position within a company or the existence of a private contract (an assignment). It would be rather awkward, to say the least, to go around asking inventors in other companies to see their employment contracts. Luckily, common sense has prevailed and, the judge decided, an earlier prior art patent is prima facie legally entitled to priority unless there is anything to suggest otherwise.

So, the message remains the same as always. Get to the Patent Office quickly – being first to file matters. If possible, though, let’s avoid the frantic dash.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

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