Prioritising priority rights - AIPPIaippi.org/.../02/PS-08_Presentation_single-slide-pack_2016-09-19.pdf · Prioritising priority rights. 1. ... will become the property of Nockof,

Panel Session VIII

AIPPI Milan 2016

Milan, 19 September 2016

Koen Bijvank

partner

Prioritising

priority rights

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.

Article 4A of the Paris Convention

2

Cyra Nargolwalla

Cabinet Plasseraud, Paris, FR

Tobias BremiIsler & Pedrazzini, Zurich, CH

Judge, Swiss Federal Patents

Court, CH

Abe HershkovitzHershkovitz & Associates, Alexandria, VA, USA

Koen BijvankV.O. Patents & Trademarks, The Hague, NL

Your panelists:

3

http://www.google.nl/url?sa=i&rct=j&q=&esrc=s&source=images&cd=&cad=rja&uact=8&ved=0ahUKEwi75ffqmPrOAhWCzRQKHTCRBf8QjRwIBw&url=http://worldartsme.com/panel/?order=views&bvm=bv.131783435,d.d2s&psig=AFQjCNFvWd8rNMbqgwGzXBq8LQlH2NDcAw&ust=1473232459384637

http://www.google.nl/url?sa=i&rct=j&q=&esrc=s&source=images&cd=&cad=rja&uact=8&ved=0ahUKEwi75ffqmPrOAhWCzRQKHTCRBf8QjRwIBw&url=http://worldartsme.com/panel/?order=views&bvm=bv.131783435,d.d2s&psig=AFQjCNFvWd8rNMbqgwGzXBq8LQlH2NDcAw&ust=1473232459384637

European patent 1 078 352

• Filed 4 March 2011 as PCT/US2011/047881

• Granted 19 July 2015

• Priority claimed from US provisional 61/834,498 filed 5 March 2010 (P1)

Applicants/Patentees: Nockof AG in Wiesbaden, DE and National University of Singapore

Applicant of P1 is I M Istaycon of Cambridge, MA in the US employed by Nockof, Inc. in Cambridge, MA

Nockof, Inc. is a subsidiary of Nockof AG

The invention was published on 15 July 2010

A case study

4

An assignment of I M Istaycon to Nockof AG was filed with the USPTO for corresponding US patent 8,759,127 on 2 August 2013. It was signed on the same day and only refers to the US patent. There are no other assignments.

I M Istaycon’s employment agreement signed in 2005:

4. Ownership of Inventions

Each and every Invention made during the period of time I am employed by Nockof, Inc. will become the property of Nockof, Inc. without additional compensation or consideration to me. At the request of Nockof, Inc. I hereby agree to promptly assign to Nockof, Inc. all right, title and interest in any invention I have made during the period of my employment.

…

11. Applicable law

This employment agreement will be governed by the laws of Massachusetts, USA.

A case study

5

Agreement between Nockof, Inc. and Nockof AG dated 2008:

8. Ownership of Intellectual Property

All intellectual property rights shall be vested in the name of Nockof AG. … … Whenever

an employee of Nockof, Inc. makes an invention, the rights to the invention will

automatically be transferred to Nockof AG upon its inception.

…

23. Applicable law

This agreement is subject to German law.

A case study

6

Bundespatentgericht 8

Tobias Bremi

19.09.2016

AIPPI Milan

Panel Session VIII

Priority Rights


Timeline and Facts

22.09.16 TODAY

19.07.15 Grant of EP B1

Patentee: Nockof AG

02.08.13 Assignment of Invention for US

Istaycon Nockof AG

05.09.11 Publication of PCT

Applicant: Nockof AG

04.03.11 PCT filing


15.07.10 Publication of invention

05.03.10 P1 priority filing

Applicant: Istaycon

Pri

ori

ty

Employment agreement

between

Istaycon and Nockof Inc

IP Transfer agreement

between

Nockof AG and Nockof Inc


Nockof AG, DE

Nockof Inc, US

Mr. Istaycon

Employment

Assignment, «automatic»

4. Ownership of Inventions

Each and every Invention made during the period of time I am employed by

Nockof, Inc. will become the property of Nockof, Inc. without additional

compensation or consideration to me. At the request of Nockof, Inc. I

hereby agree to promptly assign to Nockof, Inc. all right, title and

interest in any invention I have made during the period of my employment.

Employment defines an obligation to assign to Nockof Inc

For actual transfer to take place: assignment necessary

US assignment directly to Nockof AG ???


Legal Basis for Priority Claim

EP Patent Art. 87-89 EPC

complete, self-contained code of rules on claiming priority for

the purpose of filing a European patent application

1. Formal requirements: deadline 12mt, number, date, copy

2. Substantive requirements: “same invention” as claimed

Need to be cumulatively fulfilled

“Orthogonal”, independent:

formal needs to be fixed early: determines

publication date (irresp. of substantive); interests of

third parties (earliest effective date)

substantive: depends on claim, changes upon

prosec


Wording and Telos A 87 are unambigous!

Priority right

(1) Any person who has duly

filed, in or for

(a) any State party to the PC

or

(b) WTO…

an application for a patent, …,

or his successor in title, shall

enjoy, for the purpose 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

of the first application.

Prioritätsrecht

(1) Jedermann, der in einem

oder mit Wirkung für

a) einen Vertragsstaat der

PVÜ

b) WTO…

eine Anmeldung für ein

Patent, …vorschriftsmäßig

eingereicht hat, oder sein

Rechtsnachfolger genießt für

die Anmeldung derselben

Erfindung zum europäischen

Patent während einer Frist

von zwölf Monaten nach dem

Anmeldetag der ersten

Anmeldung ein Prioritätsrecht.

Droit de priorité

(1) Celui qui a régulièrement

déposé, dans ou pour

a) un Etat partie à la CUP

b) OMC

une demande de brevet

d'invention, de modèle d'utilité

ou de certificat d'utilité, ou son

ayant cause, jouit, pour

effectuer le dépôt d'une

demande de brevet européen

pour la même invention, d'un

droit de priorité pendant un

délai de douze mois à

compter de la date de dépôt

de la première demande.

«for the purpose»/«pour effectuer» applicant needs to be entitled @ filing!

Telos: Priority is an exceptional benefit strict rules!

Early certainty required for prosecution/publication, 3rd parties interest


Case law, Doctrine and Practice are constant

Case law: J19/87, Reasons 2 and T62/05: having regard to the crucial effect that a valid

priority date has on patentability, transfer of the priority right needs to proven

in a formal way

Doctrine/Commentaries: Wieczorek p 142, Ruhl RZ 262, Benkard (Grabinski) A87 RN4, SingerStauder

(Bremi) RZ 56, Visser A87(1) RN5, Terrell, RN 7.06

Guidelines for examination EPO, A III 6.1:As concerns the successor in title, 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.


Also followed in the contracting states

EDWARDS LIFESCIENCES AG / COOK BIOTECH INCORPORATED

MR JUSTICE DAVID KITCHIN

95.

In my judgment the effect of Article 4 of the Paris Convention and section 5 of

the Act is clear. A person who files a patent application for an invention is

afforded the privilege of claiming priority only if he himself filed the earlier

application from which priority is claimed or if he is the successor in title to

the person who filed that earlier application. If he is neither the person who

filed the earlier application nor his successor in title then he is denied the

privilege. Moreover, his position is not improved if he subsequently

acquires title to the invention. It remains the case that he was not

entitled to the privilege when he filed the later application and made his

claim. Any other interpretation would introduce uncertainty and the risk of

unfairness to third parties. In reaching this conclusion I derive a measure

of comfort from the fact that the Board of Appeal of the EPO has adopted the

same approach to the interpretation of Article 87 EPC in two cases: J

0019/87 and T 0062/05.


Leading case T62/05

Requires the full formal proof A 72 as for a EP application:

An assignment of a European patent

application shall be made in writing and

shall require the signature of the

parties to the contract.

Applies lex protectionis: natural choice, where effect

But: calls for formal requirement without legal basis

Both aspects not followed in GL


Apply to Timeline and Facts Prima facie case

22.09.16 TODAY


Patentee: Nockof AG


Istaycon Nockof AG



04.03.11 PCT filing




Applicant: Istaycon

Pri

ori

ty

• Applicant P1 ≠ PCT

• No assigment Istaycon

Nockof AG

• US Assignment: problematic

• Applicant/Patentee burden of

proof

• Proof in the hands of

patentee

• Standard: up to the hilt


Summary

• A 87 attaches priority right to applicant and successor in title

• Priority right in its effects (shift effective date) lives

«forever»

• Exercise aspect of priority right only exists for 12 mt

• After 12 deadline the right to exercise is extinct

• Nemo plus iuris transfere potest quam ipse habet

• Retroactive assignment of priority impossible

Employment contract requires express assignment, no such

assignment on file priority not valid

Patents Prioritising Priority Rights

AIPPI – Milan 2016

Jennifer Jones

[email protected]

Cyra Nargolwalla

Cabinet Plasseraud

mailto:[email protected]

Page 19

National law applies

• article 72 applied in T62/05 given national law was not put in evidence

• J 19/87 (March 1988), T 160/13 (April 2015), T 205/14 (June 2015), Edwards v Cook (UK, 2009), Idenix v Gilead (UK, 2014) all applied national law to the question of the transfer of the priority right

Page 20

Argument 1: Transfer of legal title(employment agreement - US law applies)

• Each and every Invention made during the period of time I am employed by Nockof, Inc. will become the property of Nockof, Inc. without additional compensation or consideration by me.

= immediate transfer of title, distinguishable from Stanford v Roche

• At the request of Nockof, Inc. I hereby agree to promptly assign to Nockof, Inc. all right, title and interest in any invention I have made during the period of my employment.

= administrative request to provide assignment document (filing at PO, for instance)

Page 21

Argument 1 (cont.): Legal title transferred to Nockof, AG (DE law applies)

• All intellectual property rights shall be vested in the name of Nockof, AG…Whenever an employee of Nockof, Inc. makes an invention, the rights to the invention will automatically be transferred to Nockof, AG upon its inception.

= legal title vested in Nockof, Inc. is automatically transferred to Nockof, AG

• Assuming the employment agreement and agreement between Nockof, Inc. and AG were in place before the PCT filing, then legal transfer of priority right has taken place before the PCT filing date.

Page 22

Argument 2: Transfer of beneficial title(employment agreement - US law applies)

• Each and every Invention made during the period of time I am employed by Nockof, Inc. will become the property of Nockof, Inc. without additional compensation or consideration to me. At the request of Nockof, Inc. I hereby agree to promptly assign to Nockof, Inc. all right, title and interest in any invention I have made during the period of my employment

= intention of the parties that inventions will become property of Nockof, Inc. provides by beneficial title to Nockof, Inc.

Page 23

Argument 2: Beneficial title from Nockof, Inc. to Nockof, AG. (DE law applies)

All intellectual property rights shall be vested in the name of Nockof, AG…

= right vested in Nockof, AG

• US assignment from I M Staycon to Nockof, AG evidence of intention that Nockof, AG owns the invention (and therefore priority right)

Page 24

Argument 3: EPO should apply the law and practice of the US in this instance

• As US law applies, should follow the law and practice of the USPTO:

• Retrospective assignments allowed at the USPTO: if US law applies to determine if effective transfer has occurred, should also follow US law with respect to retroactive assignments

• Similarly, when agreement amongst a group of companies the USPTO is generous in allowing mistakes to be corrected

Page 25

Argument 4: requirement at the filing date should be relaxed

• Such a strict interpretation of article 87(1) is contrary to the overriding purpose of article 87(1) as well as article 4 of the Paris Convention to assist the applicant in obtaining international protection for his invention without requiring patent filings in multiple countries

• EPO case law (T15/01) confirms that these provisions must always be construed in such a way so as to ensure that this general purpose is fulfilled as much as possible.

• Practice discriminates against US applicants and those that file first in the US

• No impairment of third parties or the public:

• cannot licence a patent until grant as no right arises until then

• article 87(1) alone can never provide legal certainty to third parties at the filing date – case law illustrates that after investigation an applicant on the EPO register may not be the successor in title. Whether an applicant is indeed entitled to the priority right in many cases will only be attainable after an examination of the facts under the applicable national law.

Panel Session VIII Presentation by

Abe HershkovitzHershkovitz & Associates, PLLC

2845 Duke StreetAlexandria, VA 22314, USA

[email protected]

AIPPI 2016

Milan, Italy

Title, Assignment and Priority

in the United States of America

Title/Assignment

As everywhere else, different (individual) property

rights are transferred in US assignments:

• right to the invention

• right to the priority (first-filed) application

• right to claim priority of the priority application*

(*was this right ever transferred to Nockof AG?)

In the US, also assigned is right to file divisional,

continuation, CIP, reissue, etc. applications for the

invention and claiming the priority application.

Transfer of property (patent) rights in the US:

• in writing (assignment)

• by operation of law27H e r s h k o v i t z & A s s o c i a t e s , P L L C 2 0 1 6

Title/Assignment

Specific to US practice:

• “Construction of patent assignment agreements is a

matter of state contract law.” See, e.g., DDB Techs.,

L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284 (Fed.

Cir. 2008); see also Abraxis Bioscience, Inc. v. Navinta

LLC, 625 F.3d 1359 (Fed. Cir. 2010) at 1364; see also

Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1370

(Fed. Cir. 2008)

• US Supreme Court in Stanford: “Since 1790, the

patent law has operated on the premise that rights in

an invention belong to the inventor.”

28H e r s h k o v i t z & A s s o c i a t e s , P L L C 2 0 1 6

Title/AssignmentTitle:

• Equitable (also known as “beneficial interest”): does not give standing

to holder to bring suit, grant licenses, etc.

• Legal: holding all substantial rights (under US Patent Law, assignable

rights are 1) the whole patent and exclusive right to make, use and vend the

invention throughout the US; or 2), an individual part or share of that exclusive

right; or, 3) exclusive right under the patent within and throughout a specified

part of the US)

• “Effective”: when substantial rights are transferred to an entity by legal owner,

then entity becomes “effective” owner and license is “effective” assignment

(Azure Networks, LLC v. CSR PLC, No. 13-1459 (Fed. Cir. Nov. 6, 2014,

regarding exclusive license agreement transferring all substantial rights,

“[e]ven if a patentee does not transfer legal title, it may transfer significant

rights...[w]hen the patentee transfers rights, the party that has been granted

all substantial rights under the patent is considered the owner regardless of

how the parties characterize the transaction that conveyed those rights.’ Id. at

8 (quoting Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1250 (Fed. Cir.

2000).”)


Title/Assignment• Filmtec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed.

Cir. 1991).

• MRI did not record its assignment of all inventions to

the US Government with the USPTO

• Cadotte’s assignment to FilmTec was the first

recorded

• The Federal Circuit created the rule of automatic

assignment through agreement without any basis in

the US Patent Act or in the common law of

assignment. Acting from its institutional law as US

patent law expert, the Federal Circuit has seemingly

adopted the Filmtec rule as one of patent assignment.


Title/Assignment

Board of Trustees of the Leland Stanford Junior

University v. Roche Molecular Systems, Inc., 583 F.3d

832, 842 (Fed. Cir. 2009)

• “Although state law governs the interpretation of

contracts generally, the question of whether a patent

assignment clause creates an automatic assignment

or merely an obligation to assign is intimately bound

up with the question of standing in patent cases. We

have accordingly treated it as a matter of federal law.

DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517

F.3d 1284, 1290 (Fed. Cir. 2008) (citations omitted).”


Title/Assignment• “We have held that the contract language ‘agree to

assign’ reflects a mere promise to assign rights in the

future, not an immediate transfer of expectant

interests. IpVenture, Inc. v. Prostar Computer, Inc., 503

F.3d 1324, 1327 (Fed. Cir. 2007) (interpreting ‘agree to

assign’ as ‘an agreement to assign,’ requiring a

subsequent written instrument); see also Arachnid, Inc.

v. Merit Indus., Inc., 939 F.2d 1574, 1580-81 (Fed. Cir.

1991) (holding that ‘will be assigned’ does not create

‘a present assignment of an expectant interest’).”

Stanford v. Roche, Decision, US Court of Appeals for the

Federal Circuit, 2008, 1509 -1510


Title/AssignmentLong-standing US precedent defines “ownership” as holding “all

substantial rights” in the patent; Crown Die & Tool Co. v. Nye Tool &

Mach. Works, 261 U.S. 24 (1923).

Requirements for ownership (legal title) in US:

• Before filing: present (immediate, automatic) assignment (“I do

hereby sell, transfer and assign...”), employment agreement, etc.

of “expectant interest” (Language!);

• After filing: assignment of all substantial rights in invention and

first filed (priority) application; and

• Recordation of assignment, employment agreement, etc. in the

USPTO not more than 3 months after execution

• Recording of license agreements: a purchaser or holder of security

interest without notice of the license will still be bound by the license,

but if an exclusive license is an “effective assignment,” it must be

recorded to fully secure rights against future bona fide purchasers and

creditors


Title/Assignment

Prior to FilmTec:

• “An agreement to assign in the future inventions not

yet developed may vest the promisee with equitable

rights in those inventions once made, such an

agreement does not by itself vest legal title to patents

on the inventions in the promisee.” Arachnid, Inc. v.

Merit Indus., Inc., 939 F.2d 1574, 1581 (Fed. Cir. 1991)

quoting from Curtis, A Treatise on the Law of Patents for

Useful Inventions § 170, at 155 (3d ed. 1867) (noting that

“a contract to convey a future invention...cannot alone

authorize a patent to be taken by the party in whose favor

such contract was intended to operate.”)


Title/Assignment

After FilmTec:

• “[i]f an assignment of rights in an invention is made

prior to the existence of the invention, this may be

viewed as an assignment of an expectant interest,”

and “[o]nce the invention is made and an application

for patent is filed…legal title to the rights accruing

thereunder would be in the assignee” (FilmTec, Fed.

Cir. 2009).

• Operation of Law does not require a written transfer


Title/AssignmentUnder the FilmTec rule, the court Decision in Stanford:

• A subsequent assignment of the invention is invalidwhere a present assignment of future rights exists if

that present assignment has the correct language and

is recorded.

• When Holodniy signed the VCA, Cetus immediately

held equitable title to Holodniy’s later PCR-related

inventions, and when the first patent application was

filed by Stanford in 1992, Cetus’s equitable title

converted to legal title in Cetus by operation

of law, without any further assignment by

Holodniy.


Title/Assignment

• “An assignment of an expectant interest can be a valid

assignment. Mitchell v. Winslow, 17 F. Cas. 527, 531-32 (C.C.D.

Me. 1843) (non-existing [personal] property may be the subject of

valid assignment); see generally “Contract Rights as Commercial

Security: Present and Future Intangibles,” 67 Yale L.J. 847, 854 n.

27 (1958). In such a situation, the assignee holds at most an

equitable title. Mitchell v. Winslow, 17 F. Cas. at 532.”

• “Once the invention is made and an application for patent is

filed, however, legal title to the rights accruing thereunder would

be in the assignee (subject to the rights of a subsequent

purchaser under Sec. 261), and the assignor-inventor would have

nothing remaining to assign.”

Decision Denying Rehearing Sept. 24, 1991, FilmTec, U.S. Court of

Appeals for the Federal Circuit - 939 F.2d 1568 (Fed. Cir. 1991)


Title/Assignment

• An assignment, grant or conveyance shall be

void as against any subsequent purchaser or

mortgagee for a valuable consideration,

without notice, unless it is recorded in the

Patent and Trademark Office within three

months from its date or prior to the date of

such subsequent purchase or mortgage

35 U.S.C. § 261 (1988).


Assignment Language

HERSHKOVITZ & ASSOCIATES , PLLC STANDARD ASSIGNMENT (FROM PROPRIETARY “INVENTOR’S COMBINED DECLARATION/ASSIGNMENT” FORM FOR PRE AND POST AIA):

• FOR GOOD and VALUABLE CONSIDERATION, the full receipt and sufficiency of which are hereby acknowledged, ASSIGNOR(S), intending to be legally bound, do hereby:

• SELL, ASSIGN, TRANSFER and CONVEY to ASSIGNEE the whole and entire right, title and interest for the United States and its possessions and territories in and to the invention which is disclosed in the above-identified patent application, and, in and to any and all patent applications related thereto including, but not limited to, all provisionals, non-provisionals, divisionals, continuations, continuations-in-part, substitutes, reexaminations, reissues and all other applications for patent which have been or shall be filed in the United States on the invention; all original, reissued and reexamined patents and extensions thereof which have been or shall be issued in the United States on the invention to the full end of the term or terms for which the patent(s) may be granted, as fully and entirely as the same would have been held by the undersigned ASSIGNOR(S) had this Assignment not been made; and specifically including all rights of priority created by the above patent application under any treaty, convention or law relating thereto;

• AUTHORIZE and REQUEST the issuing authority to issue any and all United States patents granted on the invention to ASSIGNEE;

• WARRANT and REPRESENT that no assignment, grant, mortgage, license or other agreement affecting the rights and property herein conveyed has been or will be made to others by ASSIGNOR(S), and that the full right to convey the same as herein expressed is possessed by ASSIGNOR(S);


Title/Assignment

PROMPT RECORDATION OF ALL INSTRUMENTS AFFECTING TITLE

• - for notice (third parties, potential infringers, etc.) and for reflecting

record chain of ownership and standing

• - 35 USC §261, Para. 4: an assignment, grant or conveyance shall be

void as against any subsequent purchaser or mortgagee for a valid

consideration, without notice unless it is recorded in the Patent and

Trademark Office within three months of its date or prior to the date of

such subsequent purchase or mortgage

• if an assignment is not recorded within three months after

signing, assignee is at risk of having its rights subordinated to a

subsequent bona fide purchaser or lender acting without notice of

the assignment (as argued by Stanford for notice of VCA signed

by Holodniy to Cetus)


ApplicantPre-AIA: only inventor(s) is/are Applicant(s), even if application is

assigned; no other entity had right to file application for invention

Post-AIA: inventor/all joint inventors, or the entity applying for a

patent as provided in 37 CFR §§1.43, 1.45 or 1.46

• Sole inventor or all joint inventor(s) (or all joint inventors without

the omitted inventor(s) who do(es) not join);

• Assignee of entire interest, or assignee of partial interest with

inventor(s) that did not assign their rights;

• Entity to whom inventor(s) is/are under obligation to assign;

• Legal representative (deceased or legally incapacitated inventor);

and

• A person who otherwise shows sufficient proprietary interest in

the matter may make an application for patent on behalf of and as

agent for the inventor on proof of the pertinent facts and a showing

that such action is appropriate to preserve the rights of the parties.


Priority• At least one PCT applicant must own any claim of

priority, either by assignment or by existing obligation

to assign, at application filing.

• Recitation of one or more inventor as an applicant

addresses the issue of priority, pre- or post-AIA. The

applicant is easily amended after assignment.

• When you nationalize a PCT application in the United States,

the applicant identified at the international stage will now be the

applicant at the national stage. Thus, one can file at the

international stage in the name of the inventors and once

assignments have been signed, file a request for change at the

international stage to the assignee. This allows for nationalizing

in the United States as the applicant-assignee.


Priority

• The Paris Convention requires that the person filing an

application claiming priority be the same as the person

who has filed the application from which priority is

claimed, or his or her successor in title. If this condition

is not met, the claim to priority is not valid. If the

applicant of the application claiming priority lacks title to

the claimed priority at the time of filing the application

claiming priority, the priority claim is invalid, irrespective

of whether the title is vested with the applicant of the

application claiming priority at a later date. (Art. 4)

• An agreement to assign (IM’s employment agreement, “I

will assign...”) appears to vest beneficial interest

(equitable title) in the invention to Inc., which would be

sufficient for the purpose of claiming priority.


Priority

• Priority (first filed) Application P1- US Provisional Application,

filed 5 March 2010 by Applicant I M Istaycon

• NOT “assigned” to Nockof Inc. or Nockof AG at any time during

pendency

• Agreement between Inc. and AG - considered “constructive”

assignment - automatic transfer of all substantial rights in the

invention at inception

• PCT claiming priority of P1 filed March 4, 2011 for Applicant

Nockof AG

• An assignment of IM Istaycon to Nockof, AG was filed with the

USPTO for corresponding US Patent 8,759,127 on August 2, 2013

• Does Nockof AG have a right to claim priority of P1?

• In the US, yes (once priority is fixed by recording employment

agreement and agreement between Inc. and AG)


Pitfalls to Avoid in the USPTOADS - the claim of priority will not be accepted and you will be required to pay $1700 fee (Large Entity) with Petition to accept unintentional late claim of priority:

• Country Code: must be only 2 letter codes designated by WIPO

• Priority Number: must be exact match (P2819892.3); certified copy of priority document must be exact match (if the copy does not have “.3” on it, it will be taken as not being a certified copy of the claimed priority)

• Continuity of Priority: explicit labels used for priority (“continuation of,” particularly for provisional applications, or “371 National Phase of” and identifying PCT number, etc.)

• File by Reference: do not use this method of submission of a new US non-provisional Application unless you must file on the due date without papers


Pitfalls to Avoid in the USPTO

• Recordation Cover Sheet: must have correct number of

property being transferred (so the assignment is recorded

against the correct property); same for...

• Electronic submission to the USPTO for recordation:

must be certain of number of property being filed (so the

assignment is recorded against the correct property)

• Chain of Title: must be certain all instruments recorded

against property are directed to that property, and file

“clarification” for recordation to obtain correct chain of title

if an instrument is recorded by another party that has

nothing to do with the property against which it is recorded

(the Office does not expunge assignment records)


Pitfalls to Avoid in the USPTOFormalities - you can lose claim of priority and will be required to pay fee

and file Petition to accept late filed priority document

• Certified priority document: be certain the country is member of PDX;

Office has actually withdrawn acceptance and acknowledgment of

claim/receipt of certified copy by a supplemental Notice of Allowability

a month after mailing the Notice of Allowance, after 3 years of

application pendency during which the Office constantly/consistently

acknowledged claim and receipt of copy

• Translation of priority application: do not alter text or add items such

as “Cross-Reference to Related Applications” paragraph, the Office

says this means it is not an accurate translation

• Check PAIR often; USPTO makes processing/entry mistakes and

Office holds Applicant accountable to call them to attention of Office

for correction; otherwise, informalities exist in the record


European patent 1 078 352

• has a second priority claim to US provisional 61/742,548 filed 8 July 2010

(P2)

Applicant of P2 is Y U R Rongtu, a graduate student at National

University of Singapore

An assignment of Y U R Rongtu to NUS was filed with the USPTO for

US 8,759,127 on 2 August 2013. There are no other assignments

NUS IP policy provided to all faculty and students:4C. Upon review of an Invention Disclosure, the TTO will determine who are the Inventor(s).

The University shall automatically own the Invention and, upon request, each Inventor shall

execute an assignment to confirm the assignment of all of his/her rights, title and interest in the

Invention to the University.

Other facts as in case study I

A case study II

48


Timeline and Facts part II

22.09.16 TODAY


Patentees: NAG and NUS


Istaycon NAG


Applicant: NAG and NUS

04.03.11 PCT filing

Applicants: NAG and NUS



Applicant: Istaycon

Grad Stud agreement

between

Rongto and N U Sing.


Applicant: Rongtu


Rongtu NUS

Pri

ori

ty


NAG, DE

N Inc, US

Mr. Istaycon

Employment


National University of Singapore IP policy provided to all faculty and

student with the following provision:

4C. Upon review of an Invention Disclosure, the TTO will determine who

are the Inventor(s). The University shall automatically own the Invention

and, upon request, each Inventor shall execute an assignment to confirm

the assignment of all of his/her rights, title and interest in the Invention to

the University.

Policy defines an automatic transfer to NUS

Later assignment is just a formalization/confirmation

Additional applicants in PCT no problem (GL, T1933/12)

NSU

Mr. Rongtu


PCT

Part II: Transfer of legal title(employment agreement - law of Singapore)

• Upon review of an Invention Disclosure, the TTO will determine who are the Inventor(s). The University shall automatically own the Invention

= right immediately vested in the University

and, upon request, each Inventor shall execute an assignment to confirm the assignment of all of his/her rights, title and interest in the Invention to the University.

= not required (confirmation only), may be requested for administrative purposes (filing at PO, for instance)

• Therefore assuming P2 discloses the claimed invention, regardless of whether an assignment has been executed, priority perfected. Additional applicant does not present a problem (T1933/12).

Page 51

Thank you

Documents

Prioritising priority rights - AIPPIaippi.org/.../02/PS-08_Presentation_single-slide-pack_2016-09-19.pdf · Prioritising priority rights. 1. ... will become the property of Nockof,