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06-12-2017 » Obtaining right to priority should be your first priority

OBTAINING RIGHT TO PRIORITY SHOULD BE YOUR FIRST PRIORITY

Two cases decided in 2016 and 2017 by the Board of Appeals at the European Patent Office have highlighted the importance of obtaining an explicit transfer of the right to claim priority to a national patent application prior to filing of an International (PCT) or European (EP) patent application claiming priority thereto.  

While many of the facts of these cases are indeed specific, the take-away from the holdings of the Board of Appeal is the absolute necessity of ensuring proper transfer of a priority right prior to the filing of a PCT or EP Application claiming that priority.  This is particularly true where, as in the US, the invention may not immediately vest in the name of the employer absent an assignment or explicit work contract, because retroactive effect, while valid in the US and some other jurisdictions, cannot be relied upon at the EPO.

Even where a confirmatory assignment is used to demonstrate that a transfer of rights took place before the filing of the PCT or EP applications, one must be prepared to provide evidence of the actual transfer having taken place at the date specified.

I. T577/11 Tenaris Connections Ltd. (Appellant) v. Vallourec Oil and Gas France (Respondent)

In T577/11, decided by the Board of Appeals on April 14, 2016, the right of Tenaris Connections AG (“AG”), owner of European Patent 1 540 227 (“the Patent”) which stemmed from PCT Application No. PCT/EP2003/009870 (“the Subsequent Application”), to priority in Italian application No. RM2002A000445 (“the Priority Document”) was considered.  Indeed, validity of the Patent hinged on the validity of the priority claim, based on intervening art which was opposable if the priority claim was not valid.

The Priority Document was filed on September 6, 2002, in the name of Tenaris Connections BV (“BV”), a corporation under the laws of the Netherlands, and the Subsequent Application was filed within the 12 month period on September 6, 2003, but in the name of AG for all jurisdictions other than the US, where the application remained in the names of the inventors.  An assignment transferring the rights in the Priority Document and the right to claim priority nunc pro tunc from BV to AG was signed 3 days later, on September 9, 2003, with an effective date of January 1, 2003. While Proprietor was indeed the successor in title as from September 9, 2003, the Board noted that the right to claim priority effectively ceased to exist on September 6, upon expiry of the 12-month deadline.

AG set forth several lines of argument related to why the priority claim should be considered valid: 1) the retroactive transfer dated September 9, 2003 was valid under laws of all concerned nations; 2) there was an oral agreement to transfer the rights from BV to AG as early as September 6, 2003; 3) reliance upon carrying out “convincing behaviour" within a corporate group, namely the filing of the subsequent application; 4) “manifested by conclusive action" prior to the filing of the subsequent application; and 5) general indications of transfer in emails between corporate players.  Lines of argument 4 and 5 were dismissed by the Board, and not considered.

The Board of Appeal, in analyzing the remaining lines of argument, determined that none of the arguments were sufficiently proven to demonstrate that a transfer of the rights in the Priority Document had taken place before filing of the Subsequent Application, and at best, demonstrated that a transfer should have been made as further evidenced by the nunc pro tunc transfer of September 9, 2003. 

The Board of Appeal, thus, invalidated the priority claim noting that Art. 87 of the EPC is clear, requiring a successor in title to prove that the right to claim priority was acquired before filing of the Subsequent Application in the name of the successor.

II. T1201/14 Innovative Sonic Limited (Appellant) v. Telefonaktiebolaget L-M Ericsson (Respondent)

In T1201/14, decided by the Board of Appeals on February 9, 2017, denial by the Opposition Division of the right of Innovative Sonic Limited (“Sonic”), owner of European Patent 1 883 190 (“the Patent”), to priority in  US provisional application 60/833,822 (“the Priority Document”) was considered.  Again, validity of the Patent hinged on the validity of the priority claim, based on intervening art deemed published one month after the filing date of the Priority Document, this intervening art anticipating the claims of the granted patent.

The Priority Document was filed on July 28, 2006 by inventor Sam JIANG and subsequently assigned to the Taiwanese company ASUSTek.  The validity of this transfer to ASUSTek, for both the patent application and the underlying priority right, was not disputed.  On July 27, 2007, the European patent application (EP 1 883 190) claiming priority to the priority document was timely filed within the 12-month period in the name of and by Sonic. At the date of the EP filing, no assignment had yet been concluded between ASUSTek and Sonic.  Subsequently, in December of 2012, ASUSTek assigned, nunc pro tunc with an effective date of July 24, 2007, all rights in the Priority Document to Sonic, and this assignment was duly recorded at the USPTO on February 4, 2013.

In contesting the denial of its right to priority, Sonic set forth several grounds under which it believed the transfer was concluded prior to filing of the EP patent application that matured to the Patent: 1) the nunc pro tunc transfer validly concluded in the US where such transfers are valid; 2) that an implicit transfer was effected based on German law; and 3) that a direct transfer of a second US provisional effected a transfer of the Priority Document.  However, the Board of Appeal concluded that regardless under what jurisdiction the facts of any transfer were analyzed, Sonic had failed to produce evidence demonstrating it was the successor in title to the priority right of the priority document prior to filing of the EP application.

Thus, affirming the decision of the Opposition Division that Sonic had improperly claimed priority to the Priority Document, the Board of Appeal noted that Art. 87 of the EPC is clear, a successor in title with respect to claim priority must prove that it indeed owned, i) before the filing of the later European Application,  ii) the right of priority relating to the Priority Document.  See page 23, 3.1.1.3 of the Decision.  Retroactive effect of an assignment is insufficient in view of Art. 87 EPC.

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