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Tuesday, 18 May 2010

Withdrawing patent applications: a matter of priority

"Patents Act 1977: Withdrawing patent applications with no rights outstanding" is the title of a notice posted on the UK's Intellectual Property Office website last Friday. It seeks to clarify practice on the withdrawal of patent applications and the claiming of priority. According to its substance

"... 2. The first patent application to be filed for any subject matter gives rise to a right of priority. Therefore, if a later application is filed for the same subject matter, a declaration can be made claiming priority from the earlier application. The earlier application may be pending, or may be withdrawn or terminated, at the time when the later application is filed and the priority declaration is made.

3. Section 5(3) [of the Patents Act 1977] reflects Article 4C(4) of the Paris Convention, and it enables an application filed after the first one, for the same subject matter, to give rise to a priority right - but only if certain specific conditions have been met. The specific conditions are that:

(a) the later application was filed in or for the same country as the first application, and

(b) at the date of filing of the later application, the first application had been unconditionally withdrawn, or abandoned or refused, had not been published, and did not leave "any rights outstanding", and

(c) at the date of filing of the later application, the first application had not been used for priority purposes for any other application.

4. The effect of meeting these conditions is that the later application can then give rise to a priority right, with its filing date taken as the starting point of the 12 month priority period. The first application may be entirely disregarded. This is often referred to as "regenerating the priority date", and is useful for applicants who wish to "reset the clock" in cases where the subject matter has not been disclosed at the date of filing of the later application.

Giving up "outstanding rights"

5. If an applicant wants the later application to give rise to a priority right (and so "regenerate their priority date") they must ensure that, at the date of filing the later application, the earlier application:

(a) has not been published

(b) has not already been used as the basis for a priority claim in a later application, and

(c) has been withdrawn, abandoned or refused without leaving any rights outstanding.

6. If the earlier application is simply withdrawn, there remains a right under section 14(10) and section 117 to request correction of the withdrawal if it was made in error. Similarly, if the earlier application is abandoned or refused then there may be an outstanding right to request reinstatement under section 20A, or to appeal the refusal. In either case, it remains possible to claim priority from the earlier application.

7. It follows that, in order for the later application to give rise to a priority right, the applicant must give up any outstanding rights on the earlier (withdrawn or terminated) application by the time the later application is filed.

8. This may be done by, for example, making an explicit statement when withdrawing the earlier application that the withdrawal is done "without leaving any rights outstanding". Alternatively, the statement may be made when the later application is filed. However, whenever such a statement is made, it should be noted that it rules out the possibility of later making a request to correct the withdrawal of a withdrawn application or to request reinstatement of an abandoned application.

Changes to the standard official letter acknowledging withdrawal

9. The standard letter has been updated to draw the applicant’s attention to these points, and now reads:

"Thank you for your letter dated *****.

I confirm that your patent application number GB *******.* has been withdrawn as requested. The application will be advertised as being withdrawn in the Patents Journal.

The withdrawal is effective from *****.

If your withdrawal letter states that the withdrawal was done "without leaving any rights outstanding" (or words to that effect), then you can disregard the following paragraphs.

Unless you have explicitly given them up, some rights remain outstanding in the withdrawn application (in particular, the right to request correction of the withdrawal if it was done in error). Also, if you file a later application for the same subject matter, you can still claim priority from the withdrawn application.

However, if you file a later application for the same subject matter and you want that later application itself to give rise to a priority right, then any "outstanding rights" on the withdrawn application must explicitly have been given up by the time the later application is filed. Also, the withdrawn application must not have been used as the basis for a priority claim in a later application."

The IPKat thinks that this is a helpful exercise of the "for the avoidance of doubt" variety, since applicants can easily fail to appreciate the flexible nature of priority which is based on filing rather than on first-to-invent principles.

6 comments:

Peter Smith said...

I don't see this as a helpful exercise. The rule that the earlier application has to be abandoned before the new application is filed is already capricious (per Prescott QC sitting as a deputy judge in Habermann v Comptroller-General, [2004] RPC 21). This just makes it worse.

To say that an unconditional withdrawal of the earlier patent application is not good enough seems to be placing the one-in-a-thousand cases in which reinstatement is requested above all the routine cases in which the request for withdrawal meant what it said. Wouldn't it be better just to rule that if the earlier application is reinstated, then any priority claims from the later application are invalid?

Two more thoughts:

Can we be sure that a request for withdrawal "without leaving any rights outstanding" cannot itself be corrected as a mistake?

Where does this leave all the past cases in which the priority date was regenerated with a "mere" unconditional withdrawal?

Scott Roberts said...

I agree with Peter - the (apparently new) requirement that "outstanding rights" will persist unless explicitly disclaimed is crazy - there are either rights outstanding (e.g. application is used as a basis for priority) or not. Time will tell whether rights are really outstanding or not.

Anonymous said...

@Scott Roberts - I'm not sure I agree. The IPO use the phrase "given up", not "disclaimed", and the idea that rights exist until they are given up seems entirely reasonable.

Also, rights don't have to be used to exist. When you file a first application, you have a right to claim priority; even if you don't file any priority claiming applications, you still had that right at the time. It doesn't become the case that you never had any right to claim priority - you did, you just didn't use it.

So, for the situation of subsequent priority applications, time would only tell whether you used your right or not - not whether you had it at the time the subsequent application was filed. Whether you had a particular right on day X is a question that depends on the facts as they were on day X, and it can't be changed by any events that occured subsequently.

Chris H said...

s14(10) was introduced by RRO2004 as s14(9) was considered to be too harsh. However, point 8 above appears to go against the spirit of the RRO2004 - i.e. if you accidentally withdraw the wrong file (leaving no rights outstanding) the implication is that (again) you can no longer correct that error.

Martin Leeuwangh said...

This is tricky. On the one hand, Paris 4A(1) does refer to priority as a "right", and 4C(4) says that the first application must be "withdrawn ... without leaving any rights outstanding". To my mind, that seems to imply that the feature of not leaving any rights outstanding must arise from the nature of the withdrawal: i.e. the withdrawal must include an explicit abandonment of the right to claim priority.

But then there's the last sentence of 4C(4). On the one hand, it could be "explanatory" in nature: for the avoidance of doubt, once you've abandoned the right to priority, you can't use it. On the other, it could be prescriptive: if you make use of this provision allowing you to claim a later priority, you can't then claim the earlier one.

I'm not sure I can say with confidence which is the "correct" approach.

My practice when in the UK, and the practice of the firm that I worked for when I recall this arising, was to err on the side of caution: ensure that a first application was withdrawn, and the right to claim priority explicitly abandoned, no later than the day before an intended new priority application was filed.

Now that I think about it, however, this does seem odd. As far as Paris is concerned, the right to claim priority is a right in connection with "other countries" of the Union (4A(1)). In that context (and ignoring internal priority), indicating to the UK Patent Office that you wish to abandon the right to claim priority from a UK patent application seems a little pointless!

On a slightly different point, it's worth noting that the issue is not universal, even in members of the Paris Union. In Australia, for example, the provisions on priority are not entirely consistent with Paris, and the issue of abandoning before refiling does not arise (a slightly different one does).

Anonymous said...

Priority Date: I came across this while Googling and I am surprised at the disagreement from practitioners.

Withdrawal of an application still leaves the right to claim priority for 12 months from filing (and later in many states under PCT and national rules). If one wishes to re-file in that period then they must explicitely abandon the right to claim priority from the initial withdrawn application.

Anyone who has not done so, whether their first application was filed in the UK or elsewhere, is not entitled to their original priority date in the UK and many other countries. I think that answers Peter's final question.

A request for withdrawal leaving no rights outstanding would be correctable as a mistake and I see no reason why it would not be.

The last sentence of 4C(4) would appear explanatory. A nice old text trying to explain things clearly.

I also found this presentation(http://www.ficpi.org/library/11CapeCET/CET-1305exec+intro-slides.pdf) which gives advice I would disagree with regarding the ability to restart the clock when applications are filed in two countries on the same day. I am of the opinion that this falls foul of the PC and its implementation in the UK and elsewhere. Thoughts on this anyone?

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