Ensuring Valid Priority Rights in Europe Richard Johnson Member of the International Liaison Committee (Non-European) IN ASSOCIATION WITH

Ensuring Valid Priority Rights in Europe What is the issue? Review of recent case law –EPO –United Kingdom –France –Germany Practical considerations

What is the issue? Priority claim validity is not a closed matter –Open to re-examination in validity action Inconsistent approach to applicable law –Lex originis v Lex protectionis Strict time frame for compliance –Deficiencies cannot be fixed later

Review of case law - EPO T 62/05 Nihon GE Plastics K.K. → General Electric Company High standard of proof for assignment –Analogy to application transfers (Article 72 EPC) –In writing, signed by both parties No assignment document; no valid priority claim Inconsistency with earlier case law (T 1008/96) –No account taken of applicable local law –Possible reference to Enlarged Board?

Review of case law - EPO T 788/05 “A person” & “first application” Earlier case : Terumo & Tokin –Not “first application” for later priority claim by Terumo only Priority right belongs “simultaneously and jointly” to joint applicants

Review of case law - UK Edwards Lifesciences AG v Cook Biotech Inc. Original applicants included non-employee inventors Assignment done after PCT application filed –Too late! Cook owned a share of the priority right –But not enough!

Review of case law - UK KCI Licensing Inc v Smith & Nephew plc First application: inventor applicant Subsequent application: employer applicant & subsidiary General agreement assigning future inventions –Acceptable as transfer of priority right Adding co-applicant for subsequent application –Right of priority shared through action of the parties

Review of case law - France Magic Technologies v Swisscom AG First application: Swiss inventors Subsequent application: Swiss employer company Transfer document –Before filing of subsequent application –Transferred all rights “for the US” No valid priority claim –Express mention of transfer of right of priority required –Despite transfer being effective under Swiss law

Review of case law - Germany Bundespatentgericht decision 11 W (pat) 14/09 Right of priority can validly transfer before the formal transfer of the other rights to the invention Transfer must occur before subsequent application is filed

Practical considerations Assess chain of title to right of priority before subsequent application is filed If applicants are different, obtain a specific agreement –In writing –Expressly mentioning the right of priority –Signed by both parties –Executed at least one day before the subsequent application is filed

Practical considerations If in doubt, and no agreement exists, name the same applicant –Deferring the addition of a priority claim until later probably no help

For more information please contact: Chartered Institute of Patent Attorneys 95 Chancery Lane, London WC2A 1DT Telephone: +44 (0) Richard Johnson MEWBURN ELLIS LLP 33 Gutter Lane, London EC2V 8AS Telephone: +44 (0) IN ASSOCIATION WITH