Transfer of priority right
- 1. According to Article 87 EPC, any person who has duly filed, in or for
(a) any State party to the Paris Convention for the Protection of Industrial Property or
(b) any member of the World Trade Organization,
an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purposes of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing the first application.
2. In this context, in the case where the applicants of a first and a subsequent filing are different, in order to verify whether the priority right is validly claimed, it is essential to determine whether the applicant of the subsequent filing was entitled to the priority of the first filing, in other words whether the applicant of the subsequent filing can be considered to be the successor in title of the applicant of the first filing.
In order to check whether the requirements for the transfer of the priority right have been complied with, it is necessary to determine which law is applicable to this transfer.
3. In its recent decision T517/14, a Board of Appeal of the EPO discussed whether, in the assessment of the validity of a transfer of the right of priority, the law of the state of filing of the first application should apply, or the law applicable to the legal relationship between the transferor and the transferee of the right of priority, such as corporate agreement, employment contract, or universal succession.
In this particular case, the first application was a US application filed in the names of three employees working in Israel. The subsequent application had been filed in the name of the employer of these three employees. The question was whether, in this case, the relevant law for determining the validity of the transfer of the right of priority was the US law (law of the state of filing of the first application) or the Israeli law (law applicable to the legal relationship between the transferor and the transferee of the right of priority).
The Board of Appeal decided that the relevant law was the law applicable to the legal relationship between the transferor and the transferee of the right of priority, i.e. the Israeli law.
According to Israeli law, in the absence of any agreement to the contrary between the employer and the employee, a service invention made by an employee belongs to the employer without need for a written instrument of assignment to transfer the ownership rights in the invention from the employee to the employer.
Therefore, in this case, the priority right was considered to have been validly transferred to the applicant of the subsequent filing, even in the absence of any written evidence of this transfer.
4. Since the validity of the priority claim may be crucial for the patentability of a claimed invention, it is very important for the Applicant of a subsequent filing to ensure that the priority right has been correctly transferred prior to filing the subsequent application.
The above decision is interesting in that it seeks to define the law applicable to the transfer of the priority right. It should, however, be considered with caution, since other Boards of Appeal might decide differently.
In any case, in order to reduce the risks that a priority claim be considered invalid, it is recommended to always transfer the priority right through a written agreement prior to the filing of the subsequent application.
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This IP Alert is for information purposes only and does not constitute legal advice.
Publication date : February 2016