New worries for US patent filings

On top of all the ongoing worries about the US patent system being broken, the US Courts may be quite deliberately trying to make it harder for foreigners to get access to US patents, if a recent decision by the CAFC is anything to go by. The decision (available here, and commented on at the ever-informative Patently-O here) relates to US interference proceedings over which party would be allowed to claim the right to an earlier priority date for the same invention.

(Right: foreign applicants queue to get US patents, behind US applicants of course)

The upshot (of a rather convoluted set of facts, which will not be gone into here) was that one party (Medtronic) was able to win because their priority was to a US application, even though the earliest priority of the other party (Scimed) was earlier. The problem was that Scimed's earlier priority application was made in Europe and, due to the peculiar nature of the US system insisting that only the inventors can be entitled to file, this application, filed in the name of a predecessor company, couldn't count.

There is, of course, a lot more to it than that, and the IPKat advises his readers to carefully check the decision itself to be sure about any conclusions. However, what the IPKat is worried about is whether this means that other US applications and patents that rely on claiming priority from non-US filed priority filings (of which there will be very many) could potentially be in danger. And what about the requirements of Article 4 of the Paris Convention, of which the US is a member? If the earliest European filing was made validly, even without the 'consent' of the inventors, shouldn't this be allowed to count? Or could the IPKat be missing something?

Merpel says this just goes to show that the US is yet again saying that their system, broken and unfair though it is, is the only proper one and everyone else should just get in line.

More queue jumping here, here and here.
New worries for US patent filings New worries for US patent filings Reviewed by David Pearce on Saturday, August 11, 2007 Rating: 5


  1. The CAFC decision requires that there be a nexus between the inventor and the applicant of the foreign priority application. It emphasises that this nexus must have existed at the time the foreign application was filed.

    I would argue that if an employment relationship existed when the invention was made, such that the applicant owned the invention, then that creates the necessary nexus. It appears that Scimed wasn't allowed to argue this in the CAFC, because it hadn't previously raised it in the first instance interference proceedings.

    However, the CAFC decision has some worrying language, such as requiring the "knowledge and consent" of the inventor at the time of filing the priority application. That seems to be more than just a mere nexus. Under UK law, an employer which owns the invention can file without telling the inventor in advance.

    Furthermore, what if a UK company files a UK application to which it has no rights at the time of filing, planning to obtain an assignment from the inventor before a statement of inventorship is required 16 months later? This is permitted under section 7 of the UK Patents Act 1977, and might save the day if publication of the invention is imminent.

  2. Gosh! I didn’t realise the queue extends to the South Bank, opposite the Royal Festival Hall.

  3. My concern is that the US court appears not to be concerned at all about complying with the requirements of the Paris Convention, Article 4 of which states:

    "(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.

    (2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.

    (3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application."

    It seems pretty clear to me that this judgment goes directly against this, which raises questions about whether the US is properly fulfilling its obligations under the Convention. The rather US-centric statements in the judgment, which effectively say that US law trumps all others, imply an amazing level of arrogance and, to be frank, outright disrespect for international law.

  4. David, I share your concern.

    Paris Article 4 says "Any person who has duly filed an application... shall enjoy... a right of priority...". It also makes clear that this right extends to that person's successors in title.

    So for example, UK section 5(2) says that the foreign priority application can have been filed by the same applicant as in the UK application, or by a predecessor in title of his. If the applicants are different, you can satisfy this by getting an assignment from the earlier foreign applicant of (at least) the right to claim priority. The UK applicant is then the successor in title of the foreign applicant.

    Significantly, this assignment can be signed after the filing of the foreign priority application. I'm pretty sure the same holds true in many other countries.

    You might think that a first problem under US law is that typically the inventor (who must be the US applicant) is the predecessor rather than the successor in title of the foreign applicant. At first sight, that doesn't fit well with Paris Article 4.

    Nevertheless, we read in this latest CAFC decision that the earlier Vogel decision gave some leeway. It apparently held that section 119 of the US statute still allowed priority claims in such circumstances.

    A second problem might be that, according to the CAFC, Vogel also required that the earlier foreign application should have been filed "on behalf of" the inventor. This appears to be based on the actual wording of section 119. Again, at first sight, that doesn't fit well with the laws of other countries, and implies a US-centric view of the inventor's rights.

    But this seems to be softened by the CAFC's statement that what is really required is some nexus between the inventor and the foreign applicant.

    It seems to me that the real problem introduced by this latest CAFC decision is this. They have held that the nexus (or the "on behalf of" relationship) must have existed at the time the foreign application was filed.

    So you couldn't even satisfy US law by obtaining an assignment of the priority right from the foreign applicant to the US applicant/inventor after the filing of the foreign priority application. Admittedly, that would be a somewhat circuitous procedure, since presumably you would usually then get the inventor to assign the entire US application back again. But it would agree with what you do in other countries when the applicants are not the same.

    Is this CAFC decision contrary to the Paris Convention? I think it means the US is not adhering to the bit of Article 4 which says that the priority right belongs to the foreign applicant, or to a successor in title of the foreign applicant. They think it can only belong to the inventor, and only if there is a nexus at the time of filing the foreign application. And that it can't be assigned to the US applicant/inventor subsequently.

    [PS: Has anyone got a link to a copy of the Vogel decision?]

  5. A clear and properly designed invention disclosure procedure (and employment agreements) should minimize or remove any risk from this case.

    This really should be standard practice.


  6. Paris? That's foreign, isn't it? Like Kyoto?

  7. Although it looks worrying on first glance - this case may not change things that much. The comments on Patently-O suggest that:

    SECTION 119(A) ALSO REQUIRES THAT A NEXUS EXIST BETWEEN THE INVENTOR AND THE FOREIGN APPLICANT AT THE TIME THE FOREIGN APPLICATION WAS FILED...we now explicitly hold that a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.”
    According to Merriam Webster, which defines nexus as “a causal link,” the relationship between an employer and employee should be at least the required a nexus and would meet the 119(a) requirement pointed out in the CAFC decision.

    Thus as long as you can demonstrate a nexus between the applicant in your priority application and the inventor, you should still be fine. This case appears to have special circumstances because in the decision of the present case, the chain of entitlement and related issues had not been argued before the PTO Board or before the district court. Under such (lack of) circumstances, chain of entitlement and related issues could not be presented on subsequent Appeal, which seems to have scuppered their chances.

    Of course, I haven't read the case though so I could be wrong. But if this is right, then I don't think it is the big fuss that everyone is making it out to be - if you can't show evidence to demonstrate that you are entitled to the priority application, i.e. an assignment, you are not entitled to the priority date. In this instance, it appears to be a mess up in the administrative part of proceedings that has prevented them from doing so rather than actual absence of an assignment.

    I think the same would apply in the UK?

  8. The published decision leaves rather a lot to the imagination as it is an appeal on the law, rather than the facts. Spurred on by this I waded through the original BPAI decision, and offer the following thoughts (as posted to Patently-O):-

    The two EP applications were filed by MinTec, without naming any inventors (as is permissible under the EPC). An assignment was executed on 22 August 1994 (ie. after the filings) by Cragg, assigning the invention to MinTec. The assignment also named 3 other people as assignees (and thus presumably inventors). There is also a subsequent assignment from Dake to MinTec.

    The US application was filed in the name of at least Cragg, and probably (although this is not clear) a number of the other people name above. During the course of the US application's life, the inventors have been amended, such that for the subject matter under consideration here, only Cragg and Dake remain (or maybe only Dake, it's not entirely clear, but also seems unimportant).

    As far as the inventors of concern go (Cragg and Dake), there was no relationship at the time of filing of the EP applications, this only arose later when the assignments were executed. Therefore, at the date of filing the EP applications, MinTec were not acting for Cragg and Dake, and hence Cragg and Dake did not have any right to priority from the EP applications.

    This would seem odd, as you would think that for an application to be filed, there must be some legal relationship there. The decision does not explain this, but a plausible explanation, however, would seem to be:-

    The invention arose out of collaborative work between Cragg, Dake, and the other inventors named, which other inventors were employees of MinTec. MinTec proceeded to file the EP application, forgetting that Cragg and Dake were not their employees and therefore that MinTec needed an assignment from them. This was subsequently executed.

    As the US applications evolved, it turned out that the subject matter was actually that invented by Cragg and Dake, and the other inventors fell away and were removed. Cragg and Dake thus need some relationship to the EP application to be able to claim priority from it. However, Cragg and Dake had no right to the EP applications, at the time of filing them, because the subject matter had not been assigned, and did not pass by employment. The EP applications should therefore have named Cragg and Dake as Applicants, which have subsequently allowed the priority claim.

    This is only guess-work though, and there may be other explanations. Without more information we'll never know. The party appears to have wanted to argue something like this, but weren't allowed as they didn't raise it earlier.

    If this is correct, then I think this decision is correct - the Applicants for the US application had no legal connection to the EPs and therefore couldn't claim priority from it. This was caused by the Applicants for the EP application being incorrectly identified. If the Applicants had included Cragg and Dake, or the assignment to MinTec had been effective prior to the filing of the EPs, then all would have been well. This would therefore seem to be an exhibition of the importance of carefully checking the rights to the invention before filing, and getting it resolved, particularly where foreign inventors are concerned. This could have been avoided by checking the status of Cragg and Dake.

  9. In this instance, there's a higher-level law than some mere treaty with them durned furriners. Article I, § 8, cl. 8 of the US Constitution — which, under our Supremacy Clause, overrules any foreign treaty obligation — empowers Congress to grant to inventors the exclusive right to their inventions for a limited time. As far as "disrespect for international law" goes, the US position is — rightly or wrongly — "tough noogies if it conflicts with the Constitution." (I find an assertion concerning "disrespect for international law" hilarious when comparing euros to pounds Sterling, but I digress.)

    The only way out of this dilemma is to do exactly as the US has done for copyright: Redefine "author" as "patron" for a work made for hire, such as work done by an employee within the scope of his or her duties. This is even less satisfactory than the current system, though.

    In short, I am not at all surprised by this decision. The CAFC was bound by an intricately interlocked web of general constitutional law on the matter, and did not have the authority to determine that that law does not apply to the special case of patent applications when Congress has implicitly decided that it does by failing to import the WFH doctrine from US copyright law into US patent law. And, in this particular instance, I have little sympathy for an international actor that could have avoided the whole problem by naming the natural-person actual inventors on its European application... which it could have done, as I understand the EPO application system, without any prejudice at the EPO.

  10. I stand by my comment about the disrepect point, regardless of how hilarious it may be. One of the main points (if not the whole point) of the Paris Convention is to allow applicants to file first according to the law of one country, then validly claim priority to this in other countries (with different laws). The other countries are effectively recognising that the first application was 'duly filed'. It has nothing to do with comparing apples and oranges, or Euros and Pounds Sterling, but is concerned with one country recognising the law of another country.

    If that country wants to add some peculiar local practice to make priority right valid, it should be possible to do this after making the application. This does not have to contradict the US Constitution, not least because the last time I checked it didn't apply to foreigners.

    In this case, was the application for the invention 'duly filed' according to European law? Yes. Was this the invention that was made by the named inventors? Yes. Was it unfair to allow a later filed application to claim the prize? Yes.

  11. USA is not the only country to sign an International Convention and then not follow it. But at least the Asians lose face when they renege. What's so shocking here is that the Americans seem not to be embarrassed at all. I'm waiting for a legal Houdini move as cheeky as the Hilmer Doctrine (no 54(3) effect for foreigners).

  12. David said - "In this case, was the application for the invention 'duly filed' according to European law? Yes"

    I'm not sure it was 'duly filed'. IF the hypothesis I put above in the post at 2:13 on Monday, the EP applications were filed incorrectly - they should have been filed naming MinTec and the two inventors. Because the two inventors weren't named, they have no rights deriving from that application & therefore can't claim priority.

    If they'd got the Applicants correct for the EP (or even corrected them later on up to grant of the EP) all would have been well.

    I don't think this decision is quite as odd as it seems - the facts seem to be very complex and involved, and I think this decision will turn out only to be applicable to this peculiar set of facts, rather than a general princple. At least I hope so!

  13. I have two questions:

    Firstly, MinTec filed in Europe, and Cragg and Dake filed their US application and then assigned their patent to Boston scientific.

    So the key question is: what relationship does Boston Scientific have to MinTec? If there is no commercial relationship, then the only thing in common between the applications is the inventors (and not the applicants). Surely this doesn't satisfy the Paris convention?

    Secondly, I just looked at the patents manual 5.19 and it states:

    In order for the declaration of priority to be valid at the time it is made, ie at the time of filing the application in suit, the transfer must already have taken place.

    So the question is, did they assign within 12 months of priority? From the facts, if MinTec and Boston are related, then it would seem that the priority filing was on 9 February 1994 and the assignment was after 5 June 1995. Again, not consistent with Paris.

  14. I think the previous two comments miss the point I was trying to make. 'Duly filed' under the Paris Convention means that the filing is "adequate to establish the date on which the application was filed in the country concerned" (Article 4(A)(3)). According to the EPC (Article 80), to establish a date of filing the following are sufficient:

    "(a) an indication that a European patent is sought;

    (b) the designation of at least one Contracting State;

    (c) information identifying the applicant;

    (d) a description and one or more claims"

    Incidentally, we should not get the term 'applicant' confused with inventor in this context.

    So, in this case, the original application would appear to have been duly filed (otherwise it would have been deemed void ab initio). The question should really have been only one of ownership, i.e. establishing a proper chain of title from the priority application, and not whether there was a 'nexus' (whatever that is) between the applicant and the inventors at the time of filing.

  15. Regarding "The question should really have been only one of ownership, i.e. establishing a proper chain of title from the priority application, and not whether there was a 'nexus' (whatever that is) between the applicant and the inventors at the time of filing."

    Isn't that the point made above?
    "the chain of entitlement and related issues had not been argued before the PTO Board or before the district court. Under such (lack of) circumstances, chain of entitlement and related issues could not be presented on subsequent Appeal" so the Court had to rely on S119a.

    Anyway, the more I read, the more I believe this case won't have any impact, unless you have a freakish set of circumstances.

  16. I think you are very probably right, and this is a freakish set of circumstances, including how the case was argued. The worry for foreigners is more to do with the general comments in the judgment that suggest non-US filings should comply with US requirements for a priority right to be valid. This would run counter to common practice, where inventor assignments are typically done after the US applications are filed.

  17. The original post on Patently-O may be slightly misleading. It states:

    "SciMed’s patent application was originally filed by a European company (MinTec) in February 1994 as an European Patent Application. At that time, however, the inventors (Cragg & Dake) had not yet assigned rights to MinTec. Cragg assigned his rights a few months later. Dake did not assign his rights until 1996"

    However Cragg and Dake assigned their rights to Boston Scientific and NOT MinTec (which is what the original post appears to indicate). Now unless there is a relationship between these two companies, SciMed should not be able to claim priority. For example, I do some work for a company and assign my rights in that country so they can file the IP. I then go off to another country and make a separate filing. Since the applicant is not the same, nor is it the successor in title (as required by Paris), then surely I can't claim priority?

    I would be happy for someone to point out the legal basis in the Paris Convention that would allow me to claim priority from such an application.

  18. I think in normal circumstances there will be very few incidents when an applicant does not have a nexus with the inventor at the time of filing.

    And in cases, where they don't, I think it will be likely that these same circumstances would probably not comply with the requirements of the Paris Convention, i.e. two separate and unrelated applicants filing patents in different countries at different times using the same research or theft.

    So all in all, it probably is consistent, it just sounds different.

  19. Another anonymous said "However Cragg and Dake assigned their rights to Boston Scientific and NOT MinTec (which is what the original post appears to indicate). "

    The BPAI decision, at page 25, says that both Dake and Cragg assigned their rights to MinTec - Cragg in 1994, Dake in 1996.

  20. Is there any way that the anonymice can differentiate themselves while retaining their anonymity ? then we can see who is supplementing a comment and who is replying to a comment.

    From this test post, I think the answer is No !

  21. It is perfectly possible to remain anonymous by using a pseudonym. Everyone can then at least tell which comments came from the same person.

  22. I should, of course, add for any pedants out there that using a pseudonym would allow one to be pseudonymous, not anonymous. I'm sure others get the gist.


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