Wednesday, 27 January 2021

T 0407/15 - Earlier application was assigned, but no proof that priority right was transferred too

In the present case, the validity of priority was important in view of a  disclosure in the priority interval. The priority applications were filed jointly by three persons (the inventors), and identify "The University of Western Ontario" as assignee in a section entitled "Assignee information"The current Euro-PCT application was initially filed as an international PCT application by The University of Western Ontario, and indicates these same three persons as inventors. Despite having been invited to do so by the Board, the appellant failed to provide any evidence that a transfer of the priority right took place and that it was entitled to claim these priority rights. The Board argued that: "Both US applications 61/035 540 and 61/035 777 contain a section entitled "Assignee information", identifying "The University of Western Ontario" as assignee. This is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant." "This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings."

Summary of Facts and Submissions

I. The present decision relates to the applicant's appeal of the Examining Division's decision to refuse European patent application 09 719 907.

II. The decision held that the claims on file were unclear (Article 84 EPC) and defined subject-matter extending beyond the content of the original application (Article 123(2) EPC). It further held that the subject-matter of independent claims 1 and 4, and of the dependent claims, was not inventive in the sense of Article 56 EPC in view of document:

D3: S. Ungersma et al., "In Vivo MR Imaging with T1 Dispersion Contrast", Proceedings of the International Society of Magnetic Resonance in Medicine, Berkeley (US), vol. 13, May 2005, page 414.

III. The appellant requested that the decision be set aside and that a patent be granted on the basis of a new set of claims according to a main request or, in the alternative, one of a first, second, or third auxiliary requests. All requests were new with the grounds of appeal.

IV. In the statement of grounds, the appellant explained that claim 1 of each of the new requests was amended with regard to claim 1 underlying the impugned decision so as to address the objections of clarity and added subject-matter which had led to the refusal of the application.

V. The appellant argued that the objection of lack of inventive step relied on a fundamentally flawed interpretation of the teaching of D3. In particular, nothing justified equating proteins present in tissues to be imaged (muscles) with a contrast agent, as the Examining Division had done. It was also not justified simply to disregard the uniform static polarising field of 0,5 T present in the process of D3 and, instead, to equate such a static polarising field in the intermediate field strength of 52 mT.

VI. The Board arranged oral proceedings.

VII. In a communication under Article 15(1) RPBA, setting out its provisional view, the Board drew the attention of the appellant to the following article:

D9: J. K. Alford et al., "Delta relaxivity enhanced MR (dreMR): Theory of T1-sloped weighted contrast", Proceedings of International Society of Magnetic Resonance in Medicine, Vol. 16, May 2008, page 1443.

VIII. This article refers to the 16th meeting of the ISMRM that took place in Toronto in May 2008, i.e. during the interval between the priority dates (11 March 2008 deriving from US 61/035540, or 12 March 2008 deriving from US61/035777) and filing date (11 March 2009). Its authors include the three inventors named in the present application. In order to allow the Board to decide on whether D9 belongs to the prior art in the sense of Article 54(2) EPC or not, the appellant was requested to provide evidence that it was indeed entitled to claim priority rights from the earlier US applications.

IX. Its contents reproduce paragraphs [0106] to [0108] as well as figures 6, 7a and 7b of the published application, and the Board considered it particularly relevant to the subject-matter of the requests on file.

X. With regard to the objection of lack of an inventive step, it was acknowledged that the arguments put forward by the appellant regarding document D3 appeared convincing, but the attention of the appellant was drawn to various other issues regarding lack of clarity and added subject-matter.

XI. As to the inventions claimed in the auxiliary requests, the Board noted that the statement of grounds did not provide any reason as to why there would be an inventive step, if the main request did not; and stated that their admissibility would be an issue.

XII. Oral proceedings took place as scheduled before the Board in the presence of the appellant's representative.

XIII. The appellant confirmed that the requests filed with the statement of grounds constituted its final requests on which the Board had to decide.

XIV. Claim 1 of the main request reads:

[...]

XV. Claim 1 of auxiliary request 1 differs from claim 1 of the main request in the step of normalising, which here reads:

... normalizing the acquired images to account for differences in equilibrium magnetization; ...

XVI. Claim 1 of auxiliary request 2 differs from that of auxiliary request 1 in that the contrast agent is activatable, which is binding to target molecules in the target tissue, and demonstrates relaxivity slope changes upon recognition of the target molecules.

XVII. Claim 1 of auxiliary request 3, in comparison to that of auxiliary request 2, further specifies that the static uniform polarizing magnetic field is allowed to stabilize before acquiring each of both images I**(+) and I**(-).

XVIII. Each of the main and auxiliary requests includes an independent claim 4 directed to a corresponding MRI system.

Reasons for the Decision

Entitlement to priority

1. The application was initially filed as an international PCT application on 11 March 2009 by The University of Western Ontario. It claims priority rights from the earlier US applications 61/035 540 and 61/035 777 of 11 March 2008 and 12 March 2008, respectively. The application entered into the European phase on 9 September 2010. The entitlement to claim said priority rights is to be assessed on the basis of the relevant provisions of the EPC.

2. Article 87(1) EPC stipulates that

A person who has duly filed [...] an application for a patent [...], or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority [...].

It follows that the applicant who claims a priority right from an (earlier) application must be the same as or, alternatively, the successor in title to the applicant who filed said application.

3. US applications 61/035 540 and 61/035 777 were filed jointly by three persons, who happen to be the inventors mentioned in relation to present application. The right of priority belongs to them jointly, as in T 788/05 (point 2).

4. As the applicants of the earlier US applications and later PCT application are not the same, a valid priority claim would require a transfer or rights from the original applicants jointly to the present applicant, before the filing date of the international application.

5. Article 87 EPC does not require an express assignment in writing or exclude a transfer by operation of law or by conduct of the parties concerned implying such transfer (cf. T 205/14, points 3.3 and 3.6). Independently, however, of the form that the transfer of the priority right might have taken, evidence of such a transfer must be provided in order for the Board to decide on the issue. The standard of proof applied is the balance of probabilities.

6. Despite having been invited to do so by the Board, the appellant failed to provide any evidence that such a transfer took place and that it was entitled to claim these priority rights.

7. Both US applications 61/035 540 and 61/035 777 contain a section entitled "Assignee information", identifying "The University of Western Ontario" as assignee. This is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant.

8. This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.

9. The fact that the inventors in US applications 61/035 540 and 61/035 777 and the present application are identical, is without any bearing on the legal situation regarding priority, given the absence of evidence of a transfer of priority rights.

10. In the absence of any evidence establishing that the rights of priority have been validly transferred to the applicant, the status of successor in title to the applicants who filed the earlier applications must be denied to the present applicant.

11. In consequence, the applicant is not entitled to either priority.

Main request, novelty

12. It follows that 11 March 2009, the date of filing of the international application, constitutes the effective date for defining the prior art relevant for deciding on the patentability of the claimed subject-matter.

13. The teaching of document D9 was made available to the public in May 2008. This was not contested by the appellant. The content of D9 is thus prior art in the sense of Article 54(2) EPC.

14. Document D9 discloses a relaxivity-enhanced MR imaging method. It relies on the use of activatable contrast agents that demonstrate steep relaxivity slope changes upon recognition of target molecules. The method takes advantage of the different relaxation rates resulting from said activated contrast agent being exposed to different magnetic field strengths, while non-activated tissues do not.

15. FORMULA/TABLE/GRAPHIC

Figure 2 in D9

The pulse sequence presented in D9 (cf. Figure 2, second line) is defined so as to null the longitudinal magnetization of all non-activated tissues while maximising magnetization of activated tissue by the beginning of the acquisition period (cf. Figure 2, lower time series). This is achieved by alternately shifting the strength of the (otherwise) static polarizing magnetic field (B0) of said MRI machine (120) in the positive and negative direction (±DeltaB) after each of the two inversion pulses (180°), thus amplifying the effect resulting from different relaxations of activated and non-activated tissues.

16. In contrast to this known method, the claimed method requires two successive imaging sequences with, first, the strength of the static polarizing magnetic field shifted in a first direction, followed by a similar imaging sequence with the strength shifted in the opposite direction. The contrast image is eventually obtained from the difference between the two previously obtained images.

17. The claimed method is, therefore, new with regard to the imaging method of D9.

Main request - inventive step

18. [...]

35. For these reasons, the claimed method results in an obvious manner from the teaching of D9, adapted in the light of the imaging process disclosed in D3.

36. The MRI method of claim 1 is thus not inventive in the sense of Article 56 EPC.

Auxiliary requests 1, 2 and 3

37. [...]

45. In conclusion, the amendments to claim 1 in auxiliary requests 1, 2 and 3 do not affect the conclusion reached above with regard to claim 1 of the main request as to the lack of an inventive step.

Order

For these reasons it is decided that:

The appeal is dismissed

This decision T 0407/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2020:T040715.20201027,. The file wrapper can be found here. Photo "Hubble ESA - NGC 1512 and NGC 1510" by "PHOTOGRAPHER" obtained  via Flickr under CC BY 2.0 license (no changes made).

19 comments :

  1. I am a US agent with no license in Europe. However, unless I misread this entire thing is misleading.
    (A) The assignment is HERE --> https://legacy-assignments.uspto.gov/assignments/assignment-pat-25989-184.pdf
    But it mentions the right to claim priority in the text of the assignment!
    (B) it seems like the assignment was from 2010/2011 and was therefore too late, since the PCT was filed in March 2009. Maybe this is a case like CRISPR?
    (C) it is maddening to see the EPO prioritize form over substance (yes, I know they do that in the United States as well - also maddening!!)

    ReplyDelete
  2. Form over substance? Really? Is the EPO out of line with the rest of the sovereign States that are members of the Paris Convention? If the EPO is in line with every other Paris Member State except the USA, why does EPO jurisprudence in this area make you mad? Perhaps because you are American?

    ReplyDelete
  3. Attentive Observer28 January 2021 at 13:12

    The case is interesting in that it shows that the problems linked with EP applications claiming a US priority have various aspects.

    In the famous Broad Case (T 844/18) the problem came to light in that all the applicants of the US applications were not mentioned as inventors in the later EP application.

    The present case is different in that here there is identity between the inventors, but it is not clear whether the right of priority has been validly transferred to the EP applicant, in spite of the latter being mentioned as assignee in the US applications.

    The mere fact that the EP applicant did not provide any information about the transfer of the priority right, which is distinct from the right to the application, is an indirect proof that the priority right was not transferred before filing at the EPO.

    T 844/18, which follows a long line of similar case law, and the present one should be a further warning to EP applicants claiming US priorities. There has been ample warning by now.

    I fully support Max Drei's comment! The representatives of the Broad Institute came up with a whole battery of legal statement by well-known scholars, but to no avail. It might look formal at a glance, but is not the whole patent world full of formal aspects?

    It is relatively rare that the BA quotes a new document in appeal upon examination (here D9), but in the present case one can have doubts about the original search. The ESR quotes an X,D document from the inventors. (see VIII). Why was this document not retrieved? In any case in presence of an X,D document, I thought it was mandatory for the ED to check whether the priority is valid or not. This seems to have been “overlooked”.

    ReplyDelete
  4. @US agent above:

    It seems more maddening to me that you consider it to be OK to be sloppy and using other person's (priority) rights, than that the EPO (and others than you in the US) uses the law as it is written and as it is meant. You cannot use a right that you do not own. Nothing EPC specific, general principle of law. Arrange your transfers in a proper and timely manner!

    ReplyDelete
  5. For me, the interesting thing is the question why the law must be so unforgiving on this issue. After all, before the end of the Paris prio year, the only people who know about the "earlier application" (and so are in a position to use the Paris Convention) are the people involved with the earlier application. If those people then file PCT but make a mistake in naming the PCT Applicant on the Request form, why must they all lose all legal rights in the invention? The punishment is disproportionate.

    In the Broad case, the Board thought that any laxity would lead to theft. That, for me, is to confect a danger in order to keep the law simple. At the end of the Paris year, under the EPC, "any person" can file, and can declare priority. Ownership can be sorted out later. But not "any person" can enjoy priority. ONLY the inventor or already successor in title. For me, Paris is unduly harsh. Ownership of the invention, not ownership of the right to enjoy priority, should be the sole criterion.

    But in this day and age, who is going to re-write the Paris Convention? it is as likely as that pigs might fly.

    ReplyDelete
    Replies
    1. It is not about mistakes in the spelling of the applicant's name or so, those can easily be corrected using Rule 139 EPC.
      The issue was about naming an applicant that was not entitled to sue the priority rights as he did not own it. The Board asked to prove that he did, but the applicant was not able to, nor was the representative, so then the conclusion was that he did not. Nothing disproportionate!

      And... Paris is already from the end of the 19th century! No excuses!

      Delete
    2. By the way MaxDrei, I just took your car and unfortunately wrecked it. But as I had it, there is no harm done to you!

      Delete
    3. for anonymous 29 Jan 2021 12.08:

      I am pretty certain that for all parties involved (the inventors/original applicants, and the later applicant) it was obvious that the later applicant was entitled to claim priority.

      They just made an adminstrative error documenting it.

      (and it appears that they erred in appeal by not providing whatever evidence they had, even if it would just be a recent declaration from the inventors that of course the priority rights had been transferred at the time)

      Delete
  6. There are 3 distinct rights:
    - right to an invention
    - right to file for a patent
    - right to a foreign filling.

    Each of these is governed by its own set of legal provisions, which differ from country to country.
    An employee in Germany making invention as part of his job description, using only the means provided the employer, would commit a fraud by filing for a patent in his own name, the invention (Arbeitsnehmererfindung) belongs to his employee. The same is not true for an American employee.
    The assignment of the invention under e.g. US law for 1 USD may not be valid under certain employee friendly jurisdictions (e.g. Japan) where a fair share of inventive benefits must be provided to the employee.

    To draw a parallel. If I as a mom with young children from my first marriage marry for the second time and take the surname of my husband, this surname is not automatically given to my children,

    ReplyDelete
  7. I like the comment of earlier today. Patent attorneys in multi-jurisdictional Europe understand the three distinct rights and that they differ from country to country. But it's hard to be an attorney in a global hegemon jurisdiction, isn't it? It takes more time, before it dawns on such an attorney that the law is not the same, everywhere else in the world.

    ReplyDelete
  8. @USagent:
    There seems to be an assignment. However, was this document filed as evidence? I don't immediately see this in the file wrapper.

    @others: it seems to me (there was another case not so long ago) that EPO interprets the right to claim priority as being a right of the first filer, completely unassociated with the application.

    This is not how I learned it. I learned that (barring indications to the contrary) all rights, including the right to claim priority, are normally assigned if the first application is assigned, and that, as a consequence, no separate assignment of priority rights is needed.

    Now I may have learned it incorrectly, or developements may have gone unnoticed by me, but really I would like to know: has my understanding been wrong, all these years?

    (In other words, I always understood that it was a precautionary stipulation in an assignment to mention the priority rights: Better to do it, but not really needed in standard cases)

    ReplyDelete
    Replies
    1. Transfer of the priority right is as such not arranged in the EPC (e.g., not in Art. 72 & Rule 22 EPC). It is a matter of national law. See Guidelines A-III, 6.1: "As concerns (ii) above, the transfer of the application (or of the priority right as such) must have taken place before the filing date of the later European application and must be a transfer valid under the relevant national provisions. Proof of this transfer can be filed later."

      So, if he applicable national law provides that the priority rights is transfer with the application itself, then you would need to prove that that applies.

      But as the decision indicates, the application itself and the priority right created by its filing are in principle independent rights. So the assumption that the priority is not (necessarily) transferred if the application is, is a legally logical conclusion.
      Art. 87(3) EPC also clarifies that (at least for the situation where the application gets lost): "A regular national filing shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be. "

      Delete
    2. Yesterday, this (similar) decision came online:

      T 2431/17 (Pharmaceutical Compositions having Desirable Bioavailability / ALCON) of 3.11.2020
      https://www.epo.org/law-practice/case-law-appeals/recent/t172431eu1.html

      1.5.3 If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority (cf. J 19/87, Facts, point VIII; T 1008/96, Reasons, point 3.3; T 577/11, Reasons, point 6.1; T 205/14, Reasons, point 3.5; and T 517/14, Reasons, point 2.6).

      Here, appellant P only seeks to rely on a right of priority from D15. Consequently, the burden of proof is on appellant P to establish that:

      (a) before the date of filing of the application (i.e. 13 March 2009),

      (b) the right of priority derived from the US provisional application D15 had been transferred to it

      (c) by the six original applicants and inventors

      (d) in accordance with the requirements of the relevant law.

      1.5.4 Appellant P did not produce any direct assignment of the right to priority for each of the six inventors of D15 to ARL. Rather, appellant P relies on the following "chain of title" to establish that it is the successor in title of the right to priority from D15:

      (a) each of the six inventors of D15 signed in 2000 an employment contract with ARL wherein the inventor (employee) assigns to Alcon Universal Ltd. (hereinafter AUL) the rights to inventions "heretofore or hereinafter conceived" (see A050-A055);

      (b) in 2001, AUL changed its name into Alcon Inc (hereinafter AI) (see A056);

      (c) on 1 January 2008, i.e. shortly before the filing of the priority application D15, ARL entered into a licence agreement (see A057) with Alcon International SA (hereinafter AISA). This licence agreement states that AISA "has acquired and assumed the economic benefits and burdens with respect to AI's intellectual property ownership" (see page 1). The licence agreement further provides that any future discoveries (see paragraph 2.3 of A057) "shall be the sole and exclusive property of the appropriate R&D Principal(s) funding such Discoveries". According to appellant P, there were no reasons to doubt that ARL was the R&D Principal in this case.

      To further support this alleged "chain of title", appellant P filed Mr Taylor's declaration A058. The declaration states that "if ARL funded the Discoveries disclosed in [D15] and those Discoveries were developed or acquired as a result of activities conducted pursuant to the agreement [i.e. A057], then on the date [D15] was filed, any rights to claim priority therefrom otherwise owned by AISA (for example, by virtue of its acquisition and assumption of the economic benefits and burdens with respect to [AI]'s Intellectual Property ownership (as "Intellectual Property" is defined in the agreement)) were immediately transferred to ARL pursuant to the terms of the agreement."

      Delete
    3. 1.5.5 In the opposition proceedings relating to the divisional case EP 3 042 646, the opposition division found this alleged "chain of title" unconvincing (see the grounds for the decision A048 in this divisional case, point 5.4.4-5.4.6).

      The Board shares the opinion of the opposition division set out in A048 that the succession in title has not been credibly established, for the following reasons.

      The six inventors of D15 had signed, in 2000, the employment contracts A050-A055, which assign to AUL their rights in respect of invention to be conceived thereafter. AUL then became AI in 2001. As a result, when the right to priority from D15 came into existence at the time of its filling, namely on 17 March 2008, this right was automatically assigned to AI.

      However, as acknowledged by appellant P (see letter of 31 December 2019, paragraph (45)), and as noted in the decision A048 (see paragraph 5.4.4), there is no evidence in A057 that this right to the priority from D15 was then transferred to AISA. The right to priority from D15 only came into existence after A057 was executed. Hence, the statement in A057 that AISA had acquired and assumed the economic benefits and burdens with respect to AI's intellectual property ownership does not cover the priority from D15. There is no support either in A057 for appellant P's assertion that this transfer of ownership would include the prospective ownership of any IP rights arising from inventions (later) conceived or developed by the 6 named inventors.

      1.5.6 Accordingly, appellant P's case rest solely on paragraph 2.3 of A057, which provides that any future discoveries "shall be the sole and exclusive property of the appropriate R&D Principal(s) funding such Discoveries", which R&D Principal would in the present case be ARL according to appellant P.

      However, even if ARL were considered to be the "R&D Principal(s)" funding the discoveries to which D15 pertains, the later provision of A057 assigning the property of these discoveries to ARL is contradicted by the earlier employment contracts assigning this property to AI.

      The Board cannot follow appellant P's argument that the agreement A057 of 2008 between AISA and ARL would supersede the employment contracts of 2000 or change the position for future rights, because neither the inventors of D15 nor AUL/AI are party to the agreement A057. There is no evidence that the rights deriving from D15 had been acquired directly by ARL or by AISA for it to assign them to ARL.

      1.5.7 Finally, the Board does not share the opinion of appellant P that the fact that ARL went on to file the PCT application showed, on the balance of probabilities, that they were the rightful applicant. The fact that ARL filed a PCT application pertaining to the invention of D15 shows that it had knowledge of this invention, but it does not demonstrate that it had formally acquired the right to claim priority from D15 before filing the PCT application.

      1.5.8 Accordingly, the Board finds that the transfer of the right of priority from D15 to ARL has not been demonstrated. The Board adds that appellant P's chain of title falls short of a proper demonstration even using the normal standard of proof of the "balance of probabilities". Consequently, the question as to whether a stricter standard of proof is required to establish the applicant's right to claim priority as "successor in title" within the meaning of Article 87(1) EPC is not relevant to the present case. Accordingly, a referral to the Enlarged Board of Appeal regarding this question needs not be considered.

      Delete
  9. Thank you for your elaborate reply, but I don't fully agree.

    You wrote 'But as the decision indicates, the application itself and the priority right created by its filing are in principle independent rights'

    Based on the spirit of the PC, and not contradicted by the letter of the PC, I consider them associated rights, only separated if they explcitly are separated, not separate by default (like bare property and usufruct)

    Reason: If not, based on the rules relating to claiming priority from subsequent applications for the same invention PC.4.C(4), the assignee of the application can easily influence the rights of the party holding the priority right, which is of course illogical if they are both separate rights.

    Also you wrote: 'So, if he applicable national law provides that the priority rights is transfer with the application itself, then you would need to prove that that applies.'

    No, that's what EPO says. Considering the natural unity between the two, the fact that they might be separate is the exception rather than the rule.

    Well, at least that's how I was trained, perhaps incorrectly, as I realise now.

    ReplyDelete
    Replies
    1. OK, maybe "separate rights" would be a better phrasing then "independent rights", I agree with that. But whether they are associated, separate, or independent, each of them will need to be transferred - either explicitly, or -if national law so provides- implicitly... and the EPO may want evidence of that in either case.

      Delete
  10. Paraphrasing:
    Reason 5: right of transfer based on US national law, BoA needs proof of transfer of priority. The standard of proof applied is the balance of probabilities.

    6. Applicant provide no FURTHER evidence

    7. Section in US application not considered enough proof of transfer. BoA is basically applying US law.

    It seems harsh to destroy a patent based upon the EPO's understanding of what could be considered a valid transfer under US national law. In their reasoning, this cannot be fixed by any subsequent declarations, and potentially could destroy a lot of pending rights.

    I am not a US attorney (so I should not fall in the same trap), and I could not find any declaration of inventorship in the PCT online file) but in general the inventors in US always have to declare ad nauseum that they are aware of everything, and in particular must have declared that they agree with the subsequent filing.

    So the right to pursue the priority applications were transferred, and the right to pursue the PCT applications were transferred with full knowledge of the inventors. As all the inventor names are the same, there is a lot of evidence already presented that the inventors intended the right of priority to be transferred.

    It is a pity that there is no real applicant-initiated 3rd instance where this can be challenged - this should really have been evaluated by legal members. I know they take advice from the legal division, but the EPO should not feel comfortable deciding that the file did not provide enough evidence for a transfer under US law.

    ReplyDelete
  11. Thoughtful comment, there, Tank. We agree that it does seem "harsh" but there has to be a limit somewhere, otherwise we get chaos.

    It set me thinking about the difference between an assignment and an "agreement to assign".

    Paris restricts its priority right to "successor in title". I'm not sure that the beneficiary of an "agreement to assign" that was arrived at during the Paris year, but not perfected till after the end of the year enjoys, already before the end of the Paris year, the privileges which accrue to the "successor in title". I would say not. Instead, they have an equitable right to insist on performance of the agreement, but that's no use, is it, once the Paris year has expired.

    What do you say about that way of looking at it?

    ReplyDelete
  12. At the heart of Paris Convention is mutual recognition of each others IP systems. "If it is acceptable in your system, we will also accept it"
    The strict interpretation of Paris Convention to prevent hidden abuses, but "absence of evidence" should not automatically be interpreted as "evidence of absence".

    It is true that legally, an intent is not always accepted - that is why you should have deed as well to be completely sure.

    But the EPC agrees that what constitutes as a valid transfer is determined by the appropriate national law. At least in a national court, there is a proper procedure with knowledgeable national law judges. I would be more accepting if they had actually cited a US precedent for this.

    No patent professional (see above) should be gleeful when a right is struck down because someone forgot something (or forgot to save it in the right folder) 12 years ago. The damage to a wealthy applicant may be limited, but these rules will now be applied to companies with just one patent.

    There was even a case at the EPO (I think an appeal in opposition) where the records were so old, that the UK patent office had destroyed all the files. So the proprietor could not prove that they had "withdrawn the earlier application with no rights outstanding" (apparently they also did not have the letter any more).

    And the academics will say - of course, keep all records for thirty years, just-in case. And make sure you comply with all world requirements. But in the real world, this is an impossible level of proof.

    I am not sure what just the right to claim priority is worth if you have already assigned the exclusive right to pursue the priority applications, and the exclusive rights to the subsequent applications. It seems very theoretical - this is not the same as the cases in the past where no assignment at all was done.
    The technical board should have referred it at least to the Enlarged Board because of the consequences for many pending cases.

    ReplyDelete

Statcounter