Ensuring Valid Priority Rights in Europe

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

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

3. 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

4. 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?

5. 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

6. 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!

7. 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

8. 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

9. 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

10. 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

11. 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

12. For more information please contact: Chartered Institute of Patent Attorneys 95 Chancery Lane, London WC2A 1DT Telephone: +44 (0) 207 405 9450 Email: info@cipa.org.uk www.cipa.org.uk Richard Johnson MEWBURN ELLIS LLP 33 Gutter Lane, London EC2V 8AS Telephone: +44 (0) 207 776 5300 Email: richard.johnson@mewburn.com www.mewburn.com IN ASSOCIATION WITH