Validly Claiming Priority Rights under the Paris Convention
Paris Convention Priority Rights
The earliest version of the “Paris Convention for the Protection of Industrial Property”, typically in short just referred to as the “Paris Convention”, goes back to 1883 and received its last amendment in 1979. The Paris Convention provides for cross–border acknowledgment of certain rights related to intellectual property rights between member countries of the Paris Convention. Most countries around the globe are members to the Paris Convention, currently 176 countries. From a practical standpoint for intellectual property Applicants, Article 4 of the Paris Convention governing “Priority Rights” is probably the most important Article, see http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=288514#P83_6610 .
What is a priority right?
This is defined in Article 4 B of the Paris Convention. Attempting to rephrase Article 4 B in a simplified manner, an Applicant who filed an intellectual property right application (Patent, Utility Model, Industrial Design, Trademark) in a first country can preserve for the purpose of legal validity the time rank of that application for a subsequent filing in second country. Another way of viewing a priority right may be to see it as an option to preserve the time rank of the application in a first country for a subsequent application in a second country if that option is exercised within a certain priority time period and if certain requirements are fulfilled.
Who owns the priority right?
As defined in Article 4 A the Applicant or his successor in title owns the priority right.
Article 4 A (1): Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
Although rarely practiced, the priority right can also be transferred from the initial owner of the priority right to the successor in title separately and independently of transferring the underlying priority application itself. Since the priority right is actually separable from the underlying Intellectual Property right, when transferring the priority application, it is recommended to also add some language expressly transferring the priority right with that assignment from the Applicant to the successor in title. Although with the transfer of the priority application, the transfer of the priority right is also automatically assumed in most countries, this does not apply in all the 176 Paris Convention countries.
What is the time limit of the priority right?
As defined in Article 4 A of the Paris Convention, the right of priority may be enjoyed “during the periods hereinafter fixed” – which periods according to Article 4 C (1) are 12 months for Patents and 6 months for Utility Models, Industrial Designs and Trademarks. According to Article 4 C (2) these 12/6–month “periods shall start from the date of filing of the first application; the day of filing shall not be included in the period”.
What is the scope of the priority right?
An often-overlooked scope limitation of the priority right also comes from Article 4 C (2), although it may not jump out from that Article addressing on its face the “periods”. However, limitations on the scope are set by the words “the date of filing of the first application”, meaning that a second application may not be validly claimed as a priority right. Some complexities may arise from the situation where a second application overlaps with but goes beyond the first application. At least for the overlapping part, the second application is not the first filing. De facto this means that the scope of the priority right derivable from the second application is limited to the non-overlapping part. As another way to look at that, the second application does not restart the 12/6–month time period for the overlapping part, but just starts a new 12/6–month time period for the non-overlapping part – for which non-overlapping part the second application is indeed the “first application”.
Are there any exceptions from the “first application” requirement?
The answer is “yes”, there is an exception, although in practice rarely applicable. So what needs to be done for making the second application the first for the purpose of benefiting from the full 12/6–month priority period for the entire scope of that second application? This is provided in Article 4 C (4) and can be summarized in a simplified manner that it requires that the first application needs to vanish without any traces left behind before the second application is filed.
Article 4 C (4): A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
By far, most second applications fail to fulfill at least one of these requirements in order to “be considered as the first application” under this exception, for instance since both applications have been or were co-pending (i.e. the first application leaves rights outstanding at the time the second application was filed), or the first application has already served or is intended to serve as a basis for claiming a right of priority.
What are the most common scenarios that may result in priority claim deficiencies?
1. Possible deficiency no. 1: The priority right is claimed by an Applicant of the subsequently filed application not owning the priority right within the 12/6–month priority time period
Since the priority right may be enjoyed by the Applicant or his successor in title, this requires identity of Applicant between the priority application and the subsequently filed application within the 12/6–month time period and prior to filing the subsequent application. In this connection, either missed or deficient assignments of the priority application may result in an ineffective transfer of the priority application to the same Applicant that filed the subsequently filed application, resulting also in an ineffective transfer of the priority right to the Applicant of the subsequently filed application. In short, the claimant, an individual or a legal entity, needs to be entitled to claim what he claims and when he claims, here the priority right. In case of several inventors, all need to assign. Unfortunately, this entitlement to claim the priority right needs to be established within the 12/6–month priority time period since the Applicant or his successor in title may under the above discussed Article 4 A “enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.” Some legal complexities arise from situations where the Applicant of the priority application differs from the Applicant of the subsequently filed application claiming the priority right. In the patent field, the most common scenario of that type is that the priority application was filed with the inventor as an Applicant but the subsequently filed application claiming the priority was filed in the name of the successor in title, for instance the inventor’s employer as the Applicant. This requires that the transfer of the priority application from the inventor to his employer was perfected within the 12/6–month priority time period for enabling the employer to validly claim the priority right. Unfortunately, the Paris Convention is silent regarding the applicable law for perfecting such valid transfer from an international perspective. The employer should not assume that the national laws of his country governs the effectiveness of the transfer on an international scale. For example, an automatic transfer by employment contract – as for instance typical in the United States – fails passing the test on an international scale in most countries. Even when having a signed assignment document expressly providing the applicable law this is no safeguard against some countries applying their own law to determine whether the assignment is valid. Typically, an express assignment in writing with the signatures of both party’s assignee (e.g. inventor) and assignor (employer) in ink is required for an effective transfer, and this assignment also needs to be dated to a date within the 12/6–month priority time period. Unfortunately, unless some national laws acknowledge otherwise, a retroactively executed assignment after the 12/6–month priority time period but taking retroactive effect (a “nunc pro tunc” assignment) in the 12/6–month priority time period may not fix the problem of a deficient assignment during the 12/6–month priority time period since under Article 4 A the priority right is only enjoyed “during” the 12/6–month priority time period.
2. Possible deficiency no. 2: The content of the priority application differs from the content of the subsequently filed application claiming the priority right
Differences between the priority application and the subsequently filed application claiming the priority are not automatically fatal to the validity and scope of the priority claim. That said, the claimant of a priority right is well advised to pay serious attention to these differences. The implications of these differences also vary between the various intellectual property rights Patents, Utility Models, Industrial Designs, and Trademarks. For trademarks, a valid priority claim typically requires identity of the trademarks, and for the most part identity for the overlapping list of goods and services between the priority application and the subsequently filed application claiming the priority. For Industrial Designs, although no strict identity may be required, more or less identity between the overlapping industrial designs is required for a valid priority claim. For patents and utility models, both identity of the overlapping features as well as the combination of the overlapping features is required for a valid priority claim. In many jurisdictions, these requirements have been interpreted more stringently in recent years, resulting for instance in difficulties for patents and utility models to justify that level of identity particularly for specific combinations of features without having at least somewhat comparable claims in the priority application and the subsequently filed application claiming the priority right. For example, it is recommendable practice to put at least some claim – like language into a US provisional patent application for securing a better chance to justify a broader scope of the priority right and to more easily correlate that scope to the subsequently filed application claiming the priority. There is a bandwidth of variations as to how stringently courts or other fact finders such as national or regional Patent and Trademark Offices view these identity requirements.
3. Possible deficiency no. 3: Not the first, but the second application is claimed as a priority right
As already discussed above under the headlines, “What is the scope of the priority right?” and “Are there any exceptions from the “first application” requirement?” this problem often arises from larger patent families with overlapping content of the patent family members. A good example may be a typical US patent family tree containing in addition to the first filed application a chain of continuation applications containing content overlapping with the first application or maybe a number of provisional applications of overlapping content. If all applications have a filing date lying within the 12/6–month priority time period, all applications may be claimed as a priority and therefore collectively establish a priority right for the entire collective content of all applications. However, the priority date for the various features also varies depending on their first filing date. In other words, it should not be assumed that the priority date for the entire collective content is the priority date of the first application filed. This applies also to combinations of features, for instance combinations of features of the first filing with features only introduced in later filings, so that even though the features of the first application and their combination may benefit from the oldest priority date, these may not when combined with features that were just filed at a later date and therefore create a different overall combination of features. In practice this means that the Applicant encounters quite some uncertainty as to the actual priority date of the finally claimed combination of features in a subsequent application claiming several priority applications.
4. Possible deficiency no. 4: A failure to comply with all form requirements for claiming the priority right
Although the Paris Convention limits the form requirements that may be established under national laws, it at the same time leaves the door open for governing certain requirements under national laws. Within certain time limits governed by national laws the following formalities typically need to be met:
- The date and country of filing of the priority application needs to be declared.
- The application number of the priority application needs to be declared.
- A copy of the priority application needs to be submitted, in many jurisdictions as a certified copy often referred to as the “priority document”. Some Patent and Trademark Offices mutually agreed on electronic priority document exchange (PDX) in lieu of providing an actual hard copy of the priority document if the Applicant authorizes such PDX.
The particular deadlines and form requirements for perfecting the priority claim need to be checked on a country by country basis.
Summary and recommendations
Although providing the convenience of some extra time for foreign filings a number of strings are attached to develop the desired scope of the priority right. When having full identity between the priority application and the subsequently filed application claiming the priority including identity of Applicants and when making sure that all formalities are met there shouldn’t be a problem in validly claiming the priority right. Anything short of that should raise a red flag, specifically when the scenario mandates reliance on the priority right. For instance, if for patents or utility models an Applicant’s own publication took place within the priority time period between the filing date of the priority application and the subsequently filed application claiming the priority, such publication creates a so–called intervening prior art that may render the subsequently filed application claiming the priority invalid if the priority right does not hold up. In this connection, it needs to be kept in mind that most countries do not apply a novelty grace period for invention patents. Notwithstanding the general usefulness of the tool of claiming priorities, in many cases an applicant may wish to consider filing a direct International patent application under the Patent Cooperation Treaty (PCT) as a first application, preserving the full 30 month national/regional phase entry deadline for the currently 151 PCT countries. This can also be done on the same day as filing a national patent application in parallel if the goal is not to delay parallel prosecution of a national application in a specific country. Apart from sparing the priority claim formalities, this strategy removes the priority right altogether from the equation and with it any uncertainties that may otherwise result from it.