assignment of priority rights

Practice points

The entitlement of the intended Convention applicant to the priority rights of all the priority applicants should always be checked before filing the Convention application.

Where necessary, ensure that assignments of the priority rights, that are valid assignments under the relevant national law, have been executed by all the priority applicants in favour of the intended Convention applicant before filing the Convention application.

We recommend that these assignments should at least be in writing, preferably signed by both parties (see T62/05) unless this is clearly not required under relevant national law, and preferably should expressly assign the right to claim priority (in addition to any rights in the invention and the priority application).

If suitable assignments have not been put in place, it may still be possible to establish the Convention applicant’s title as successor through relevant applicable national law e.g. rights may have vested by operation of law or contract or the existence of rights in equity may suffice.

Where there is any doubt, assignments should be completed

If not all the relevant assignments are in place or there is any doubt as to the intended Convention applicant’s entitlement, the applicants for the Convention filing should include those priority applicants (or successors in title through valid assignments, etc.) who have not assigned their rights to the intended Convention applicant.

If the Convention applicant was not the successor in title to all the priority applicants at the Convention filing date, correction may be possible. Correction should be considered at an early stage as it may be more convenient to deal with this under the PCT rather than regionally/nationally. However, correction needs to be approached with caution as it could make public a possible priority problem.

Retroactive assignments may be an alternative route to establishing succession under relevant national law, if these would be treated, as between the parties and in relation to third parties, as entered into prior to the Convention filing date. However these may well not be acceptable to cure a priority problem in the EPO and the UK in light of the approach in T62/05 and the comments in Edwards v Cook.

Relevant provisions

Article 4A(1) Paris Convention (Stockholm Revision):

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 87(1) European Patent Convention:

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 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.

In the UK, the priority date of an invention is dealt with by section 5 Patents Act which, by section 130(7), is to be construed in conformity with the corresponding provisions of the EPC (including Article 87).

Relevant case law – UK

KCI Licensing Inc & Others v Smith & Nephew Plc – UK Patents Court: Arnold J – 23rd June 2010

One of the issues in this infringement action was the validity of the priority claim to European patents (UK).

The US priority applicant was Mr Lina. The PCT applicants were Mr Lina and Mr Heaton for the US, Kinetic Concepts Inc (Mr Lina’s employer) for all designated states except the US and Mediscus Products Ltd (Mr Heaton’s employer and a wholly-owned subsidiary of KC Inc) for GB only.

Arnold J found that KC Inc was the sole applicant for the PCT application in so far as it related to the European patents; Mediscus was only a co-applicant in relation to the GB national which was not in issue – see further comments below.

The principal question to be addressed was therefore whether KC Inc was a successor in title for the purpose of validly claiming priority.

Arnold J said that it was common ground that “successor in title” means successor in title to the invention, which was also common ground in Edwards v Cook, referred to below.

A Confidentiality Agreement between Mr Lina and KC Inc contained an express assignment of all his rights in inventions conceived or developed by him during his employment and a further assurance to enable the company to file patent applications for the inventions. Although the Agreement was governed by Texas law, no evidence as to Texas law was put forward and it was therefore common ground that it should be assumed to be the same as English law.

Arnold J held that an assignment of rights in a future invention was effective, under English law, to assign legal title to the invention to KC Inc and that therefore KC Inc was Mr Lina’s successor in title at the date of the PCT Application. Alternatively, if an assignment of a future invention could not convey the legal title, the Agreement had transferred the beneficial interest in the invention, including the right to file patent applications: this was sufficient to make KC Inc the successor in title to Mr Lina for the purposes of claiming priority, even if KC Inc had not acquired the bare legal title; he referred to J19/87 in support, which is discussed below.

He commented that the operation of Article 4A Paris Convention and Article 87(1) EPC, being provisions of international treaties, could not depend upon the distinction drawn by English law, but not by most other laws, between legal and equitable title.

Thus,“when determining whether a person is a “successor in title” for the purposes of the provisions, it must be the substantive rights of that person, and not his compliance with legal formalities, that matter”.

This appears to be a more relaxed approach than that adopted by the EPO Board of Appeal in T62/05, discussed below.

There was an issue over whether Mediscus was named as an applicant for the EP(UK) or just the GB national (which was not the subject of the proceedings) and whether Mediscus was entitled to rely upon the priority claim. The case was contrasted with Edwards v Cook (see below) where there had been 3 priority applicants and one PCT applicant which was the successor in title to the rights of only one of the priority applicants. Having found that Mediscus was not a co-applicant of the EP(UK), Arnold J nevertheless went on to consider whether, if he were wrong, this would adversely affect the priority claim. KCI argued that KC Inc had agreed by conduct to transfer part of its interest in the invention to its subsidiary Mediscus and that this was sufficient to make Mediscus a successor in title for the purposes of claiming priority and that no greater degree of formality was required. Arnold J accepted this submission and held that the priority claim would therefore not be adversely affected if Mediscus was held to be a co-applicant. Arnold J’s decision appears to be based on the premise that all the PCT applicants had to be successors in title to the priority applicant for the purpose of validly claiming priority.

However, it was accepted that the PCT application disclosed the same invention as that disclosed in the priority application. Mr Heaton had not in fact contributed to the invention and Mediscus, his employer, was named purely as a device for filing the PCT application through the UK-IPO.

Arnold J’s decision does not therefore deal with the situation where the Convention application contains added inventive matter. Since the added inventive matter cannot in any event benefit from the priority, it is reasonable to argue that the addition of a non-successor co-applicant for the Convention filing should not adversely affect the validity of the priority claim for the invention described in both the Convention filing and the priority application.

Edwards Lifesciences AG v Cook Biotech Incorporated – UK Patents Court: Kitchin J – 12th June 2009

The validity of the priority claim was also in issue in this revocation and infringement action. (The subsequent appeal was decided on 28th June 2010 on the issue of obviousness and so it was not necessary to review Kitchin J’s findings on the priority issue.)

The US priority application was filed in the names of 3 inventors: Obermiller, Osse and Thorpe. The applicant for the PCT application, from which the UK patent in suit derived, was Cook Biotech Incorporated.

For the purposes of Article 4A(1) Paris Convention, Kitchin J decided that “successor in title” must mean successor in title to the invention, as the parties before him had agreed. He added that “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 the priority is claimed or if he is the successor in title to the person who filed that earlier application”.

It was accepted that Cook was entitled to Obermiller’s rights via his contract of employment. Osse and Thorpe were not employees of Cook; they assigned their rights to Cook after the PCT filing date and before grant of the patent in suit.

The transcript of the hearing shows that the assignments were expressed to be effective from the priority date i.e. they were expressly retroactive. During the hearing, Kitchin J referred to the existence of case law to the effect that retrospective assignments “might be good between the two parties to the assignment but cannot properly affect the interest of third parties”. In the event, Cook appears not to have relied upon the assignments being retroactive but focused on the argument that assignment before grant was sufficient.

Kitchin J held that the priority claim was invalid because, at the filing date of the Convention application, Cook was neither the applicant for the priority application nor the successor in title from all the applicants for the priority application.

The assignment of the rights of Osse and Thorpe to Cook after the Convention application was filed (albeit that the assignments were worded to have retroactive effect) did not help because it remained the case that Cook was not entitled to claim the priority at the Convention filing date.

In his decision, Kitchin J stated that “any other interpretation would introduce uncertainty and the risk of unfairness to third parties”.

Kitchin J considered that his decision was consistent with EPO case law, in particular referring to T62/05 and J19/87 which are summarised below.

Relevant case law – EPO

T62/05 – Technical Board of Appeal – 14th November 2006

In this EPO case, the priority document was a Japanese filing in the name of Nihon GE Plastics KK, a Japanese company. The Convention filing was a PCT application in the name of a US company, GE Company, which owned a majority share in the Japanese priority applicant.

Under opposition, the validity of the priority claim was questioned. GE Company then assigned the European patent to Nihon GE (without any retroactive wording or choice of law clause) in an attempt to save the priority claim.

The Board of Appeal said that this assignment was not relevant to the question of whether GE Company was entitled to claim priority from the Japanese priority application as at the Convention filing date. GE Company could only be considered as the owner of the right to claim priority provided it was established that the succession in title from Nihon GE to GE Company occurred before the end of the 12 month period starting from the filing date of the priority application.

Although the assignment did not state that it was retroactive (i.e. nunc pro tunc), this would probably not have made a difference to the outcome in light of the Board’s finding that entitlement to claim priority must be established at the date of the Convention filing or at least within 12 months of the priority date.

It was also argued that there was an understanding that GE Company was entitled to file for European protection and claim priority, with some inconclusive documents said to evidence this. No evidence was put forward asto how this understanding and the documents should be construed under any relevant national law and as to what law would be applicable.

The Board of Appeal said that priority rights are assignable independently of the corresponding patent application and may be restricted to specific countries. It then went on to consider the requirements for assignment of the priority rights in relation to the filing of a European patent application. It decided that the transfer of priority rights must be proven in a formal way and that it was reasonable to apply an equally high standard of proof as required for an assignment of a European patent application by Article 72 EPC i.e. in writing and signed by or for both parties.

The Board of Appeal decided that, even if an intention to transfer priority rights (i.e. before the PCT filing) might have been discerned from the various documents relied upon, this intention had not been finalised in a form that would indubitably establish that the transfer of the priority rights for the filing of a European patent application on the basis of the Japanese priority application had taken place before the end of the 12 months Convention period.

Of interest here is the fact that the Board did not consider whether any relevant national law might be applicable in determining the question of entitlement to the priority rights, by contrast with J19/87 and T1008/96, summarised below. No evidence on the relevant national law having been submitted, the Board considered the matter under the EPC. As the EPC makes no provision for the assignment of the right to claim priority, the Board applied the same standards for the valid transfer of such rights as apply under Article 72 for the valid transfer of a European patent application: in writing and signed by both parties.

J19/87 – Legal Board of Appeal – 21st March 1988

In this case, national law was considered in evaluating the validity of the priority claim.

The priority document was a UK filing by the inventor, Mr Belcher, who then assigned his rights in the invention, the UK application, the right to file further applications and the right to claim priority to National Research Development Corporation (a UK entity). NRDC later signed an assignment back to the inventor of the rights in the invention and the application but this document was not signed by the assignee, as was required at the time for a valid legal assignment of a UK patent application. The inventor subsequently filed the EP Convention application in his own name and then assigned both applications to Burr-Brown Corporation.

The validity of the priority claim became an issue when Burr-Brown sought to correct the EP Convention applicants ab initio to NRDC and Mr Belcher, arguing that the assignment from NRDC to Belcher was not effective as it was only signed by NRDC and that the European application contained additional inventive matter over the UK application for which Mr Belcher was the inventor.

In this case, Burr-Brown was invited to file a legal opinion as to the effect under English law of the assignment from NRDC to Mr Belcher that had only been signed by the assignor. The subsequently filed opinion of Nicholas Pumfrey (then, a UK barrister) was to the effect that the assignment was a valid legal assignment of the rights in the invention (making the assignee a successor in title of the inventor to the invention) and gave the assignee an equitable interest in the UK priority application.

Mr Pumfrey also said that, as an owner in equity of the priority application, the assignee was entitled to claim priority from that application as a successor in title (making the assignee a successor in title to the priority application under Article 87).

The Board relied on this in finding that there was a valid priority claim.

T1008/96 – Technical Board of Appeal – 25th June 2003

Again the Convention applicant differed from the priority applicant and the validity of the priority claim was raised in opposition proceedings. Both applicants were Italian and the priority documents were two Italian utility model applications. The Board stated that the question of entitlement should be answered in accordance with national law. Because of a conflict of evidence as to whether the Convention applicant was indeed the successor in title under Italian law, the priority claim failed.

This information provides a summary of the subject matter only. It should not be acted on without first seeking professional advice.

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APPLICATION FILING

Validly claiming priority rights under the paris convention, paris convention priority rights, introduction.

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.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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27. October 2023

EPO on the assignment of priority rights

In its decision on the merged proceedings G 1/22 and G 2/22, the Enlarged Board of Appeal recently confirmed that the EPO has competence to assess whether a party has a priority claim based on the EPC. This also applies if the priority right has been assigned to a legal successor. The formal requirements for such an assignment are set very low by the Enlarged Board of Appeal, which confirms the possibility of an implicit assignment.

The legal succession of priority rights, in particular the validity of assignments of priority rights, frequently raises questions in practice due to their international character. This is because transfers of private rights – such as priority rights – and underlying agreements are generally subject to national civil law. Since the origin, existence and effects of priority rights are governed only by the EPC (and by the Paris Convention in its relationship to the EPC), the Enlarged Board of Appeal is of the opinion that priority rights according to Article 87(1) EPC are autonomous rights under the EPC and should also be judged only in the context of the EPC, i.e. independently of national laws. In this context, according to the Enlarged Board of Appeal, it is justified to consider an agreement implied by the joint filing of a subsequent application as an agreement subject only to the autonomous law of the EPC. In this respect, the EPO is competent to assess whether a party is entitled to priority according to Article 87(1) EPC.

In principle, according to the autonomous law of the EPC, there is a rebuttable presumption that the applicant claiming priority is entitled to claim priority. Nothing else applies in the case where the priority right has been assigned to a legal successor. It was questionable to what extent a joint filing of a subsequent application constitutes an informal or silent (implicit) and effective agreement between two parties, if only one of the parties was an applicant of the earlier priority application. In this respect, the Enlarged Board of Appeal is of the opinion that if national laws already do not provide for any or only minor formal requirements for the assignment of priority rights, the autonomous law of the EPC should also not provide for any formal requirements higher than the national laws which may be relevant in connection with a European application. Rather, the EPO should be guided by the lowest standards of national law and accept implied assignments of priority rights in almost all circumstances. For example, the autonomous law of the EPC should not require that the assignment of priority rights be in writing or signed by the parties, as this would be a high threshold in view of national law. The Enlarged Board of Appeal concludes, based on the low formal requirements, that in the absence of unambiguous indications to the contrary, a joint subsequent application is sufficient evidence that the parties have entered into an implied agreement allowing one party to rely on the priority right established by the filing of another party’s priority application.

Almost incidentally, the Enlarged Board of Appeal also commented on the requirement that the assignment of the priority right must be completed prior to the filing of a subsequent European patent application. Even this requirement was questionable. If there are national legal systems that allow a subsequent (“nunc pro tunc”) assignment of priority rights, the EPO should not apply higher standards here either.

In summary, the assessment of whether a party is entitled to priority according to Article 87(1) EPC is, in the view of the Enlarged Board of Appeal, a question of autonomous law of the EPC, i.e. independent of national laws, and the EPO is competent in this respect. The formal requirements for the assignment of priority rights are set very low by the Enlarged Board of Appeal, which should be a great convenience for patent applicants in practice. Thus, in the future, it should generally be presumed that a priority claim exists in favor of the later applicant of a European patent application, even if the latter is not identical with the applicant of the earlier priority application.

Latest news, shape matters – the epo’s new and fundamentally broader definition of „substance or composition” for medical use claims as per decision t 1252/20, t 2790/17: application of article 83 epc for second medical use claims in view of g 2/21, t 1076/21 – epo on a shift of the burden of proof when asserting insufficient disclosure, feel free to contact us.

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In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe, an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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March 16, 2020

Valid claiming of priority rights in patent applications

Essenese Obhan

Dr. Joyita Deb

On 16 January 2020, the European Patent Office (EPO) Board of Appeal revoked a patent related to CRISPR/Cas9 technology ( See ), and in doing so delivered one of the most anticipated decisions ( See ) in the field of biotechnology patents in recent times. This gene-editing technology, which is the subject of a bitter battle for intellectual property rights between two rival parties – The Broad Institute and the University of California (UC), Berkeley, is revolutionizing research in biotechnology.

The case concerned one of Broad Institute’s CRISPR patents, EP2771468, which was revoked owing to a jurisdictional difference in the interpretation of valid claiming of priority rights. The Broad Institute’s licensing strategy is likely to be compromised by this outcome, as UC Berkeley has already obtained a patent in Europe.

This article discusses the jurisdictional differences in the interpretation of priority rights and provides a summary of the case.

A PRIMER ON JURISDICTION-SPECIFIC PRIORITY RIGHT REQUIREMENTS

Priority rights, as defined by Article 4A of the Paris Convention ( See ) is a right that “ Any person who has duly filed an application for a patent…….., 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 4B further states that the right cannot be invalidated during the time period specified (usually 12 months) by acts such as another filing, the publication or exploitation of the invention. The decision upheld the EPO’s long-standing practice of requiring every applicant named on the priority application, or their successor-in-title, to also be named on the priority-claiming application. It also provides a cautionary reminder for considering jurisdiction-specific requirements when applying for a patent.

The EPO is among many jurisdictions which distinguishes between the right to claim priority and the priority rights in an application i.e. the ownership of priority rights. The finding in this case was that the right to claim priority is a formal requirement at the EPO, which is necessary to identify the application and to determine the state of the art (i.e., assess the novelty and inventive step).

For this purpose, the EPO requires that the applicant who filed the priority application should be the same or their successors-in-title in the later-filed application. A ‘successor-in-title’ can be proven by submitting a legal document indicating the transfer of rights e.g., an assignment. By corollary, the EPO also recognizes that a priority right is indivisible and thus, for joint applicants, all applicants must be named in the subsequent applications, for the application to validly claim priority.

At the United States Patent and Trademark Office (USPTO), however, the emphasis is less on the applicants named, and more on the invention disclosed. The requirement is that the disclosed invention must be the same in both the prior applications and subsequent applications. Instead of requiring that all applicants be named in subsequent applications, the USPTO requires that ‘ each prior-filed provisional application must have the same inventor or at least one joint inventor in common with the later-filed application’ (MPEP 211.01(a)) ( See ).

India, meanwhile, has borrowed liberally from UK patent law and therefore, priority rights and their transfer function in a manner similar to the EPO. This issue has not been tested in India as yet, and there is no relevant case law, but references during the drafting of Indian patent law, from the Ayyangar Committee Report (the Report) ( See ), clarify that the right to claim priority and the priority rights in an application i.e. the ownership of priority rights, should be treated separately.

For instance, the Report specifies in Clause 8, Sub-Clause (2, pt. 361) regarding Provisional and Complete Specifications “ The corresponding provision in the U.K. Act, 1949 is section 3 (3) which, however, does not specifically mention that the two or more applications accompanied by provisional specifications referred to in the clause should be in the name of the same applicant in order to attract the provisions of that section though this is implicit from the other provisions of the U.K. Act with reference to anticipation etc. The language of the sub-clause which specifically provides for the applications being in the name of the same applicant puts the matter beyond doubt and might therefore be retained ”.

This paragraph from the Report clarifies that ‘the all applicants’ approach of the EPO, in view of priority applications, is also a requirement in India, as this serves to determine the state-of-the-art for the application. Further, Section 20 of the Indian Patents Act 1970, clarifies that an assignment is required in case in any change in the applicant of a patent.

For applications made to the Indian Patent Office, therefore, it is advisable to retain the names of all the applicants in a priority application in the later application, or in the case of joint applicants, to provide an assignment or an agreement by the applicants specifying their consent in the succession of title.

BACKGROUND OF THE CASE

Patent No. EP2771468, titled ‘Engineering of Systems, Methods and Optimized Guide Compositions for Sequence Manipulation’, was granted to three co-proprietors, The Broad Institute, the Massachusetts Institute of Technology, and the President and Fellows of Harvard College. The patent claims priority to 12 US provisional applications.

The application, however, failed to mention the name of one person who was named in two priority applications; no document demonstrating the transfer of rights or succession of title was produced either.

The opponents of the granted patent cited this as a ground for revocation, and going forth, the patent was revoked under Article 87(1) of the European Patent Convention (EPC) which states that “ Any person who has duly filed … 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 ” ( See ).

THE ARGUMENTS OF THE CASE

The case regarding EP2771468 centred around three issues: ( See )

(i) EPO’s authority to assess priority rights

(ii) The definition of ‘any person’ in Article 87(1), EPC, and

(iii) Whether the interpretation of ‘any person’ should be governed by national law

The proprietors of the patent argued that the EPO was not competent to assess the priority rights to an application as the ownership of rights or entitlement falls under the jurisdiction of national courts. However, the Board held that the assessment of priority right is a procedural requirement to determine the effective date of filing for patentability purposes i.e. to determine the novelty and the inventive step. It held that the validity of the priority claim must be assessed, otherwise anyone would then be able to claim priority from the first application, which would compromise the determination of the state of the art. Therefore, the Board held that the EPO was the correct authority to assess the validity of a priority claim and dismissed the proprietors’ first argument.

The second argument related to the interpretation of the term ‘any person’ in Article 87 of the EPC and Article 4A(1) of the Paris Convention. The patentees argued for a more permissive definition of the term, in line with practice at the USPTO, which requires merely one inventor to be in common between the priority application and the subsequent application. Established practice at the EPO, on the other hand, requires that a subsequent application should mention all the applicants named in the priority application. The Board reconfirmed this, affirming that a priority right is a single indivisible right and the applicant of the subsequent filing must be either the applicant/s of the priority filing or their successor in title.

The last issue under consideration was whether the phrase “ any person who has duly filed ” under Article 87(1) should be interpreted by reference to the national law of the first filing (US national law in the current case). The Board agreed with the Opposition Division’s interpretation, in that both under the Paris Convention and the EPC, the right to claim priority derives from the formal requirement of filing the first application. Thus under Articles 4A(1), A(2), and A(3) of the Paris Convention, the consideration of the term ‘any person who has duly filed’ is only to accord a date of filing and not to assess the contribution of an inventor. It, therefore, rejected that national law held precedence here.

This decision reconfirms the standard practise at the EPO of including all the applicants of a provisional application into the subsequently-filed application to validly claim priority rights. The detailed written decision of the Board of the Appeal is awaited and is likely to shed further light into the reasoning behind this approach.

As a general rule, it is therefore recommended to provide a proof of right, or an assignment indicating the transfer of rights in case of a change in the applicant(s), and in case of joint applicants, the proof of right should indicate that each of the applicants has agreed to the change. Such a practice would prevent any future issues arising due to jurisdiction specific requirements related to valid claiming of priority rights.

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Assigning priority rights in Europe – How to stay out of trouble

1 December 2017

At first glance, it seems straightforward to assign intellectual property rights from one entity to another. A recent decision by the EPO’s Board of Appeal in T1201/14 (see here ) shows that it can, and relatively often does, go wrong.

According to European jurisprudence it is generally accepted that the right to claim priority arising from a patent application is transferable independently from the corresponding title to the patent application itself and may be transferred individually for every country and to a number of different parties. What’s more, as this case confirms, the established interpretation of Article 87 EPC requires that the right to priority must be assigned to the relevant party before filing any subsequent patent applications.

However, the provisions of the EPC do not lend themselves to an autonomous determination of the formal requirements for assignments, which have been considered in previous decisions to be a matter of national law. In this case the patent proprietor tried to use this aspect to their advantage. In detail, the patentee argued that although they had not transferred the right to priority explicitly in a written contract before the date of filing of the European patent application, their priority claim was still valid, since:

The priority application was filed in the US, and US national law allows for retrospective assignments of the right to priority; or
Germany is a designated member state of the European patent in question, and under German national law there is no requirement for the transfer of the right to priority to be made in writing, and so an oral or implicit transfer is sufficient; and/or
Since the Assignor has it’s residence in Taiwan, Taiwanese law should be applied, which does not make any distinction between the “right to the priority founding registration” and the “right to claim priority” therefrom. Furthermore, similar to German law, Taiwanese law provides for the possibility of an implicit transfer of the right to priority without the need for a written contract.

While the Board accepted that there is no established jurisprudence of the Boards of Appeal as to which national law is generally applicable, they did not find any of the above arguments persuasive. In this regard, the Board ruled that even if all of the above national laws could be applied, this could not remedy the fact that the patentee failed to timely transfer the right to priority. Referring to the above numbering, the Board found:

Although retrospective assignments are allowed under US national law, this is not compatible with established European Case Law and hence cannot be acknowledged by the EPO;
While the Board agreed that an implicit or oral contract may be considered sufficient for a timely transfer of the right to priority, it could not be established “beyond reasonable doubt” that an implicit transfer of the right to priority had occurred before the date of filing;
Regarding the two rights being inseparable in Taiwan, the Board concluded that this is not compatible with established European Case Law and hence cannot be acknowledged by the EPO. In terms of the implicit transfer, the Board noted that the evidence provided “ prima facie” failed to prove “beyond reasonable doubt” that a transfer of the right to priority occurred, similar to the reasoning relating to German law.

Although the Board of Appeal did not establish which national laws could or should be applied to the transfer of priority rights, there are some practice points we can take home from this decision.

Firstly, the right to priority for a European patent application must ALWAYS be transferred before the filing date, even if under an applicable national law retrospective assignment of the right to priority is permissible. Secondly, the principle that the right to the priority application and the right to claim priority are separate rights, cannot be circumvented by the argument that the applicable national law does not foresee an independent priority right. Thirdly, if the applicable national law allows for verbal contracts and implicit transfer of rights, there is a chance that valid transfer of the right to priority can be proven even if no written contract is available BUT the burden of proof is on the party claiming that the transfer took place, and they must establish this “beyond reasonable doubt”. Witness statements that are not contemporaneous may not suffice.

Frank Harner Advanced Engineering group

If you require further information on anything covered in this briefing, please contact Frank Harner (fharner@withersrogers.com; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

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Priority right - prove it or lose it

25 February 2021

In a recent appeal decision (T 407/15), an application was refused as obvious after the applicant failed to prove it had the right to claim priority.

The University of Western Ontario appealed against the EPO’s decision to refuse its application, EP2252901A. The application claimed priority from two US provisional applications, filed by applicant-inventors who were not applicants of the subsequent PCT application.

During the appeal proceedings, the Board of Appeal identified an article published by the inventors between the priority dates and the filing date. The article was considered to be particularly relevant to the claimed subject matter. As a result, the validity of the priority claims became pertinent to the application’s patentability.

Article 87(1) EPC states that “Any person who has duly filed […] 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”.

According to established EPO practice, all applicants of a priority application, or their successors in title, must be applicants of the subsequent application for a valid claim to priority.

CRISPR patent appeal decision: EPO maintains “all applicants” approach to priority

The EPO’s “all applicants” approach to priority was recently confirmed in the widely reported appeal decision T 844/18 (see our summary article: “CRISPR patent appeal decision: EPO maintains “all applicants” approach to priority”, 21 December 2020: https://dycip.com/all-applicants-priority).

In addition, any transfer of the right to claim priority must have occurred in advance of the filing date of the subsequent application. Although other jurisdictions allow retroactive transfers of priority rights, they are not accepted by the EPO.

In the present case, each of the US provisional applications specified that the University of Western Ontario was an assignee on their respective filing dates (and therefore in advance of the PCT filing date). However, no further detail of the assignment was included. The Board of Appeal decided that this was not sufficient evidence to establish a valid transfer of the right to claim priority from the earlier applications. In particular, the Board of Appeal reasoned: “This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While… the priority documents... appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.”

The EPC and the Paris Convention do not specify formal requirements for a valid transfer of priority rights. However, it is established EPO practice that an applicant/proprietor bears the burden of proving succession in title when the validity of a priority claim is called into question. Therefore, the University of Western Ontario was asked to provide evidence that it was entitled to claim priority from the earlier US provisional applications. However, it failed to do so. Consequently, the Board of Appeal decided that the application was not entitled to priority, and the claims were found to be obvious in light of the intervening disclosure.

According to established EPO case law, the independence of a priority right and the right to an application does not mean that a valid transfer of a priority right inevitably requires a separate and express assignment declaration. As such, the explicit transfer of a priority right may not be essential, when other evidence is sufficient. For example, in T 205/14 and T 517/14, an expert witness attesting to the applicant’s inherent right to claim priority from an application based on its employees’ service inventions, under Israeli law (the law of the country of employment and place of business), was considered adequate evidence of a right to claim priority. In addition, in the interlocutory decision of the opposition division relating to EP2203462B, an assignment of “the entire right, title and interest in and to any and all Letters Patent which may be granted therefor” was considered to implicitly include the right to claim priority, under US law (the law of the country of the priority filing, and the law governing the legal relationship between the parties).

It is clear from T 407/15 that merely indicating the transfer of the right to a priority application may not be sufficient to prove that the priority right had also been transferred.

Given that an applicant’s/proprietor’s right to claim priority in advance of the filing date may need to be proven for patentability, where not all of the applicants of a priority application are listed on the subsequent application, we recommend that an assignment is executed that specifically mentions the transfer of the right to claim priority.

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Patent Laws, Regulations, Policies & Procedures
Manual of Patent Examining Procedure
Chapter 0300
Section 301

301 Ownership/Assignability of Patents and Applications [R-10.2019]

35 u.s.c. 261 ownership; assignment..

Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.

An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for 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. 262 Joint owners.

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

37 CFR 3.1 Definitions.

For purposes of this part, the following definitions shall apply:

Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated.

Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.

Office means the United States Patent and Trademark Office.

Recorded document means a document which has been recorded in the Office pursuant to § 3.11 .

Registration means a trademark registration issued by the Office.

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1) . Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a dominant patent, failure to obtain FDA approval of the patented invention, an injunction by a court against making the product of the invention, or a national security related issue).

For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a) . For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 .

“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. The U.S. Patent and Trademark Office cannot explain or interpret laws that govern assignments and related documents, nor can it act as counselor for individuals. Assignments and other documents are contracts that are governed by the relevant state or jurisdictional law.

In 37 CFR 3.1 , assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent [or] patent application....” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).

As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.

An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.

A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assignment of patent rights in the patent or application.

Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.

Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:

(A) Multiple partial assignees of the patent property;
(B) Multiple inventors who have not assigned their right, title and interest; or
(C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differences are important to note:

(A) An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3 . Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 , MPEP § 317.03 , and Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016). For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11 . See 37 CFR 3.81(a) .
(B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step may be necessary to permit the assignee to “take action” in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for applications filed on or after September 16, 2012) or under the conditions set forth in pre-AIA 37 CFR 3.73 and MPEP § 324 (for applications filed before September 16, 2012). Recordation of an assignment in the assignment records of the Office does not , by itself, permit the assignee to take action in the application, patent, or other patent proceeding.

Additionally, for applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. See 35 U.S.C. 115(e) , 37 CFR 1.63(e) , and MPEP §§ 302.07 , 317 , and MPEP § 602.01(a) .

301.01 Accessibility of Assignment Records [R-10.2019]

37 cfr 1.12 assignment records open to public inspection..

(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
(1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
(2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

Assignment documents relating to patents, published patent applications, registrations of trademarks, and applications for registration of trademarks are open to public inspection. Records related to assignments of patents, and patent applications that have been published as patent application publications are available on the USPTO website. Images of assignment documents recorded June 1998 and later are also viewable on the Office website. To view images of earlier-recorded assignment documents, members of the public must place an order pursuant to 37 CFR 1.12(d) .

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open. Thus, if a document covers either a trademark or a patent in addition to one or more patent applications, it will be available to the public ab initio; and if it covers a number of patent applications, it will be so available as soon as any one of them is published or patented. Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.

Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public. For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14 , information related thereto is only obtainable upon a proper showing of written authority. For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D). See 37 CFR 1.12 . For applications filed prior to September 16, 2012, the written authority must be from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application. See pre-AIA 37 CFR 1.12 .

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14 .

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b) .

Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19 . Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA. Payment of the fees required by NARA should accompany all requests for copies.

All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746 and at the Civilian Records Division of the National Archives at College Park, 8601 Adelphi Road, College Park, MD 20740-6001. Assignment records from before 1837 are not available. Individuals should check the National Archives website, www.archives.gov , for how to obtain information from these locations.

301.01-Accessibility of Assignment Records
302.01-Assignment Document Must Be Copy for Recording
302.02-Translation of Assignment Document
302.03-Identifying Patent or Application
302.04-Foreign Assignee May Designate Domestic Representative
302.05-Address of Assignee
302.06-Fee for Recording
302.07-Assignment Document Must Be Accompanied by a Cover Sheet
302.08-Mailing Address for Submitting Assignment Documents
302.09-Facsimile Submission of Assignment Documents
302.10-Electronic Submission of Assignment Documents
303-Assignment Documents Not Endorsed on Pending Applications
304‑305-[Reserved]
306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
307-Issue to Non-Applicant Assignee
308-Issue to Applicant
309-Restrictions Upon Employees of U.S. Patent and Trademark Office
310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
311-Filing of Notice of Arbitration Awards
312-[Reserved]
313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
314-Certificates of Change of Name or of Merger
315-Indexing Against a Recorded Certificate
316-[Reserved]
317.01-Recording Date
317.02-Correction of Unrecorded Returned Documents and Cover Sheets
317.03-Effect of Recording
318-Documents Not to be Placed in Files
319-[Reserved]
320-Title Reports
321‑322-[Reserved]
323.01(a)-Typographical Errors in Cover Sheet
323.01(b)-Typographical Errors in Recorded Assignment Document
323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
323.01(d)-Expungement of Assignment Records
324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

United States Patent and Trademark Office

Accessibility
Privacy Policy
Terms of Use
Emergencies/Security Alerts
Information Quality Guidelines
Federal Activities Inventory Reform (FAIR) Act
Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act
Budget & Performance
Freedom of Information Act (FOIA)
Department of Commerce NoFEAR Act Report
Regulations.gov
STOP!Fakes.gov
Department of Commerce
Strategy Targeting Organized Piracy (STOP!)
USPTO Webmaster

Transfer of Priority Rights

the assignment of the priority right takes place before the subsequent filing (in the case of planned subsequent US applications: the nexus between the inventor(s) and the assignee is established at the filing date of the priority application),
the assignment of the priority right is explicitly mentioned in writing with reference to the details of the priority application, and
both parties sign the assignment document.

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14.1 Assignment of Contract Rights

Learning objectives.

Understand what an assignment is and how it is made.
Recognize the effect of the assignment.
Know when assignments are not allowed.
Understand the concept of assignor’s warranties.

The Concept of a Contract Assignment

Contracts create rights and duties. By an assignment The passing or delivering by one person to another of the right to a contract benefit. , an obligee One to whom an obligation is owed. (one who has the right to receive a contract benefit) transfers a right to receive a contract benefit owed by the obligor One who owes an obligation. (the one who has a duty to perform) to a third person ( assignee One to whom the right to receive benefit of a contract is passed or delivered. ); the obligee then becomes an assignor One who agrees to allow another to receive the benefit of a contract. (one who makes an assignment).

The Restatement (Second) of Contracts defines an assignment of a right as “a manifestation of the assignor’s intention to transfer it by virtue of which the assignor’s right to performance by the obligor is extinguished in whole or in part and the assignee acquires the right to such performance.” Restatement (Second) of Contracts, Section 317(1). The one who makes the assignment is both an obligee and a transferor. The assignee acquires the right to receive the contractual obligations of the promisor, who is referred to as the obligor (see Figure 14.1 "Assignment of Rights" ). The assignor may assign any right unless (1) doing so would materially change the obligation of the obligor, materially burden him, increase his risk, or otherwise diminish the value to him of the original contract; (2) statute or public policy forbids the assignment; or (3) the contract itself precludes assignment. The common law of contracts and Articles 2 and 9 of the Uniform Commercial Code (UCC) govern assignments. Assignments are an important part of business financing, such as factoring. A factor A person who pays money to receive another’s executory contractual benefits. is one who purchases the right to receive income from another.

Figure 14.1 Assignment of Rights

Method of Assignment

Manifesting assent.

To effect an assignment, the assignor must make known his intention to transfer the rights to the third person. The assignor’s intention must be that the assignment is effective without need of any further action or any further manifestation of intention to make the assignment. In other words, the assignor must intend and understand himself to be making the assignment then and there; he is not promising to make the assignment sometime in the future.

Under the UCC, any assignments of rights in excess of $5,000 must be in writing, but otherwise, assignments can be oral and consideration is not required: the assignor could assign the right to the assignee for nothing (not likely in commercial transactions, of course). Mrs. Franklin has the right to receive $750 a month from the sale of a house she formerly owned; she assigns the right to receive the money to her son Jason, as a gift. The assignment is good, though such a gratuitous assignment is usually revocable, which is not the case where consideration has been paid for an assignment.

Acceptance and Revocation

For the assignment to become effective, the assignee must manifest his acceptance under most circumstances. This is done automatically when, as is usually the case, the assignee has given consideration for the assignment (i.e., there is a contract between the assignor and the assignee in which the assignment is the assignor’s consideration), and then the assignment is not revocable without the assignee’s consent. Problems of acceptance normally arise only when the assignor intends the assignment as a gift. Then, for the assignment to be irrevocable, either the assignee must manifest his acceptance or the assignor must notify the assignee in writing of the assignment.

Notice to the obligor is not required, but an obligor who renders performance to the assignor without notice of the assignment (that performance of the contract is to be rendered now to the assignee) is discharged. Obviously, the assignor cannot then keep the consideration he has received; he owes it to the assignee. But if notice is given to the obligor and she performs to the assignor anyway, the assignee can recover from either the obligor or the assignee, so the obligor could have to perform twice, as in Exercise 2 at the chapter’s end, Aldana v. Colonial Palms Plaza . Of course, an obligor who receives notice of the assignment from the assignee will want to be sure the assignment has really occurred. After all, anybody could waltz up to the obligor and say, “I’m the assignee of your contract with the bank. From now on, pay me the $500 a month, not the bank.” The obligor is entitled to verification of the assignment.

Effect of Assignment

General rule.

An assignment of rights effectively makes the assignee stand in the shoes of An assignee takes no greater rights than his assignor had. the assignor. He gains all the rights against the obligor that the assignor had, but no more. An obligor who could avoid the assignor’s attempt to enforce the rights could avoid a similar attempt by the assignee. Likewise, under UCC Section 9-318(1), the assignee of an account is subject to all terms of the contract between the debtor and the creditor-assignor. Suppose Dealer sells a car to Buyer on a contract where Buyer is to pay $300 per month and the car is warranted for 50,000 miles. If the car goes on the fritz before then and Dealer won’t fix it, Buyer could fix it for, say, $250 and deduct that $250 from the amount owed Dealer on the next installment (called a setoff). Now, if Dealer assigns the contract to Assignee, Assignee stands in Dealer’s shoes, and Buyer could likewise deduct the $250 from payment to Assignee.

The “shoe rule” does not apply to two types of assignments. First, it is inapplicable to the sale of a negotiable instrument to a holder in due course (covered in detail Chapter 23 "Negotiation of Commercial Paper" ). Second, the rule may be waived: under the UCC and at common law, the obligor may agree in the original contract not to raise defenses against the assignee that could have been raised against the assignor. Uniform Commercial Code, Section 9-206. While a waiver of defenses Surrender by a party of legal rights otherwise available to him or her. makes the assignment more marketable from the assignee’s point of view, it is a situation fraught with peril to an obligor, who may sign a contract without understanding the full import of the waiver. Under the waiver rule, for example, a farmer who buys a tractor on credit and discovers later that it does not work would still be required to pay a credit company that purchased the contract; his defense that the merchandise was shoddy would be unavailing (he would, as used to be said, be “having to pay on a dead horse”).

For that reason, there are various rules that limit both the holder in due course and the waiver rule. Certain defenses, the so-called real defenses (infancy, duress, and fraud in the execution, among others), may always be asserted. Also, the waiver clause in the contract must have been presented in good faith, and if the assignee has actual notice of a defense that the buyer or lessee could raise, then the waiver is ineffective. Moreover, in consumer transactions, the UCC’s rule is subject to state laws that protect consumers (people buying things used primarily for personal, family, or household purposes), and many states, by statute or court decision, have made waivers of defenses ineffective in such consumer transactions A contract for household or domestic purposes, not commercial purposes. . Federal Trade Commission regulations also affect the ability of many sellers to pass on rights to assignees free of defenses that buyers could raise against them. Because of these various limitations on the holder in due course and on waivers, the “shoe rule” will not govern in consumer transactions and, if there are real defenses or the assignee does not act in good faith, in business transactions as well.

When Assignments Are Not Allowed

The general rule—as previously noted—is that most contract rights are assignable. But there are exceptions. Five of them are noted here.

Material Change in Duties of the Obligor

When an assignment has the effect of materially changing the duties that the obligor must perform, it is ineffective. Changing the party to whom the obligor must make a payment is not a material change of duty that will defeat an assignment, since that, of course, is the purpose behind most assignments. Nor will a minor change in the duties the obligor must perform defeat the assignment.

Several residents in the town of Centerville sign up on an annual basis with the Centerville Times to receive their morning paper. A customer who is moving out of town may assign his right to receive the paper to someone else within the delivery route. As long as the assignee pays for the paper, the assignment is effective; the only relationship the obligor has to the assignee is a routine delivery in exchange for payment. Obligors can consent in the original contract, however, to a subsequent assignment of duties. Here is a clause from the World Team Tennis League contract: “It is mutually agreed that the Club shall have the right to sell, assign, trade and transfer this contract to another Club in the League, and the Player agrees to accept and be bound by such sale, exchange, assignment or transfer and to faithfully perform and carry out his or her obligations under this contract as if it had been entered into by the Player and such other Club.” Consent is not necessary when the contract does not involve a personal relationship.

Assignment of Personal Rights

When it matters to the obligor who receives the benefit of his duty to perform under the contract, then the receipt of the benefit is a personal right The right or duty of a particular person to perform or receive contract duties or benefits; cannot be assigned. that cannot be assigned. For example, a student seeking to earn pocket money during the school year signs up to do research work for a professor she admires and with whom she is friendly. The professor assigns the contract to one of his colleagues with whom the student does not get along. The assignment is ineffective because it matters to the student (the obligor) who the person of the assignee is. An insurance company provides auto insurance covering Mohammed Kareem, a sixty-five-year-old man who drives very carefully. Kareem cannot assign the contract to his seventeen-year-old grandson because it matters to the insurance company who the person of its insured is. Tenants usually cannot assign (sublet) their tenancies without the landlord’s permission because it matters to the landlord who the person of their tenant is. Section 14.4.1 "Nonassignable Rights" , Nassau Hotel Co. v. Barnett & Barse Corp. , is an example of the nonassignability of a personal right.

Assignment Forbidden by Statute or Public Policy

Various federal and state laws prohibit or regulate some contract assignment. The assignment of future wages is regulated by state and federal law to protect people from improvidently denying themselves future income because of immediate present financial difficulties. And even in the absence of statute, public policy might prohibit some assignments.

Contracts That Prohibit Assignment

Assignability of contract rights is useful, and prohibitions against it are not generally favored. Many contracts contain general language that prohibits assignment of rights or of “the contract.” Both the Restatement and UCC Section 2-210(3) declare that in the absence of any contrary circumstances, a provision in the agreement that prohibits assigning “the contract” bars “only the delegation to the assignee of the assignor’s performance.” Restatement (Second) of Contracts, Section 322. In other words, unless the contract specifically prohibits assignment of any of its terms, a party is free to assign anything except his or her own duties.

Even if a contractual provision explicitly prohibits it, a right to damages for breach of the whole contract is assignable under UCC Section 2-210(2) in contracts for goods. Likewise, UCC Section 9-318(4) invalidates any contract provision that prohibits assigning sums already due or to become due. Indeed, in some states, at common law, a clause specifically prohibiting assignment will fail. For example, the buyer and the seller agree to the sale of land and to a provision barring assignment of the rights under the contract. The buyer pays the full price, but the seller refuses to convey. The buyer then assigns to her friend the right to obtain title to the land from the seller. The latter’s objection that the contract precludes such an assignment will fall on deaf ears in some states; the assignment is effective, and the friend may sue for the title.

Future Contracts

The law distinguishes between assigning future rights under an existing contract and assigning rights that will arise from a future contract. Rights contingent on a future event can be assigned in exactly the same manner as existing rights, as long as the contingent rights are already incorporated in a contract. Ben has a long-standing deal with his neighbor, Mrs. Robinson, to keep the latter’s walk clear of snow at twenty dollars a snowfall. Ben is saving his money for a new printer, but when he is eighty dollars shy of the purchase price, he becomes impatient and cajoles a friend into loaning him the balance. In return, Ben assigns his friend the earnings from the next four snowfalls. The assignment is effective. However, a right that will arise from a future contract cannot be the subject of a present assignment.

Partial Assignments

An assignor may assign part of a contractual right, but only if the obligor can perform that part of his contractual obligation separately from the remainder of his obligation. Assignment of part of a payment due is always enforceable. However, if the obligor objects, neither the assignor nor the assignee may sue him unless both are party to the suit. Mrs. Robinson owes Ben one hundred dollars. Ben assigns fifty dollars of that sum to his friend. Mrs. Robinson is perplexed by this assignment and refuses to pay until the situation is explained to her satisfaction. The friend brings suit against Mrs. Robinson. The court cannot hear the case unless Ben is also a party to the suit. This ensures all parties to the dispute are present at once and avoids multiple lawsuits.

Successive Assignments

It may happen that an assignor assigns the same interest twice (see Figure 14.2 "Successive Assignments" ). With certain exceptions, the first assignee takes precedence over any subsequent assignee. One obvious exception is when the first assignment is ineffective or revocable. A subsequent assignment has the effect of revoking a prior assignment that is ineffective or revocable. Another exception: if in good faith the subsequent assignee gives consideration for the assignment and has no knowledge of the prior assignment, he takes precedence whenever he obtains payment from, performance from, or a judgment against the obligor, or whenever he receives some tangible evidence from the assignor that the right has been assigned (e.g., a bank deposit book or an insurance policy).

Some states follow the different English rule: the first assignee to give notice to the obligor has priority, regardless of the order in which the assignments were made. Furthermore, if the assignment falls within the filing requirements of UCC Article 9 (see Chapter 28 "Secured Transactions and Suretyship" ), the first assignee to file will prevail.

Figure 14.2 Successive Assignments

Assignor’s Warranties

An assignor has legal responsibilities in making assignments. He cannot blithely assign the same interests pell-mell and escape liability. Unless the contract explicitly states to the contrary, a person who assigns a right for value makes certain assignor’s warranties Promises, express or implied, made by an assignor to the assignee about the merits of the assignment. to the assignee: that he will not upset the assignment, that he has the right to make it, and that there are no defenses that will defeat it. However, the assignor does not guarantee payment; assignment does not by itself amount to a warranty that the obligor is solvent or will perform as agreed in the original contract. Mrs. Robinson owes Ben fifty dollars. Ben assigns this sum to his friend. Before the friend collects, Ben releases Mrs. Robinson from her obligation. The friend may sue Ben for the fifty dollars. Or again, if Ben represents to his friend that Mrs. Robinson owes him (Ben) fifty dollars and assigns his friend that amount, but in fact Mrs. Robinson does not owe Ben that much, then Ben has breached his assignor’s warranty. The assignor’s warranties may be express or implied.

Key Takeaway

Generally, it is OK for an obligee to assign the right to receive contractual performance from the obligor to a third party. The effect of the assignment is to make the assignee stand in the shoes of the assignor, taking all the latter’s rights and all the defenses against nonperformance that the obligor might raise against the assignor. But the obligor may agree in advance to waive defenses against the assignee, unless such waiver is prohibited by law.

There are some exceptions to the rule that contract rights are assignable. Some, such as personal rights, are not circumstances where the obligor’s duties would materially change, cases where assignability is forbidden by statute or public policy, or, with some limits, cases where the contract itself prohibits assignment. Partial assignments and successive assignments can happen, and rules govern the resolution of problems arising from them.

When the assignor makes the assignment, that person makes certain warranties, express or implied, to the assignee, basically to the effect that the assignment is good and the assignor knows of no reason why the assignee will not get performance from the obligor.

If Able makes a valid assignment to Baker of his contract to receive monthly rental payments from Tenant, how is Baker’s right different from what Able’s was?
Able made a valid assignment to Baker of his contract to receive monthly purchase payments from Carr, who bought an automobile from Able. The car had a 180-day warranty, but the car malfunctioned within that time. Able had quit the auto business entirely. May Carr withhold payments from Baker to offset the cost of needed repairs?
Assume in the case in Exercise 2 that Baker knew Able was selling defective cars just before his (Able’s) withdrawal from the auto business. How, if at all, does that change Baker’s rights?
Why are leases generally not assignable? Why are insurance contracts not assignable?

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The Errors in the Assignment of the Right of Priority, or How to Lose a European Patent

The filing of a patent application gives rise to two different rights, namely the right derived from the application in question (ownership), and the right of priority, i.e. the right to claim the priority of a first application in a second patent application that must be filed within a certain period of time, which in the case of patents is of 12 months.

For priority to be valid, essentially two conditions must be met: the second patent application must relate to the same invention and the applicant must either be the same or have acquired the right of priority. Although the second condition (same applicant or applicant entitled to priority) seems an easy formality to fulfil, it actually has its difficulties and requires special attention from applicants.

It is common for the ownership of the first application to be transferred before the second application has been filed. By way of example, it is relatively common, particularly in applications filed in the USA, for the applicants (owners) of the first application to include the inventors and for them to assign ownership to a third party, such as a company, organisation or university. However, the transfer of ownership does not automatically imply a transfer of the right of priority. In particular, the European Patent Office (EPO) applies very strict rules to determine whether, at the time of filing the second application, the applicant is the same or has acquired the right of priority.

For the priority to be valid, the applicant on the filing date of the patent application must be the same as that of the priority application. If it is not, the subsequent applicant must have acquired, on the same date, the right of priority through an assignment agreement with the original applicant.

The assignment of priority must be made in the proper form, which means that it must be made by each and every original applicant and as clearly as possible, ideally by means of a written contract. And not all the evidence that is submitted to prove the assignment of the right of priority will serve the purpose.

In the EPO practice, if not all applicants for the first application are applicants for the second application, and if the former ones do not expressly assign the right of priority to the latter when and as they should, the priority is not valid and this can lead to the loss of the European patent because the defect in the right of priority cannot be remedied. Moreover, the right of priority cannot be assigned a posteriori or retroactively.

This was the case of European patent application No. EP13818570, European national phase of an international PCT application, concerning CRISPR-Cas9 technology in the name of several applicants (The Broad Institute, MIT, Harvard College) , which was refused by the EPO due to lack of novelty, motivated in turn by the loss of the right of priority because it had not been assigned at the right time.

This European patent application claimed the priority of a number of provisional applications filed in the United States in the name of several applicants, including the inventors.

In this regard, we recall that the filing date of a European patent application as a national phase of a PCT international application is the filing date of the PCT. Thus, if the PCT international application validly claims a priority, then the effective date of the European patent application, for the purposes of determining its novelty and inventive step, is the priority date. But if the priority is not valid, the effective date is the filing date of the PCT international application.

In the case of the CRISPR-Cas9 patent application, not all the applicants of the provisional applications filed in the United States, which included the inventors, were among the applicants of the PCT international application (The Broad Institute, MIT, Harvard College). In this case, the absent applicants should have assigned to the latter, at the time the PCT international application was filed, not only their right of ownership but also their right of priority, which they did not do.

Since there was no assignment of the right of priority by the absent applicants in the second application, the EPO considered that the priority claim was invalid. Therefore, the EPO considered as the effective date of the European patent application to be the filing date of the PCT application and not the priority date.

The tragedy of the situation is that between the (invalid) priority date and the filing date of the PCT application, the inventors had disclosed the invention, so the EPO revoked the European patent for lack of novelty.

The case had a particular resonance because it concerned a patent on a technology with great economic relevance, related to a molecular tool that allows editing or correcting the genome of a cell and which led to the award of a Nobel prize (granted, by the way, to a different research team from those who lost this European patent due to a defect in priority).

The relevant decision (decision T 0844/18), dated 16 January 2020, can be found in the following link:

https://www.epo.org/law-practice/case-law-appeals/pdf/t180844eu1.pdf

Another similar case is that of European patent application No. EP09719907 , also a national phase of an international PCT application, on behalf of the Canadian university “The University of Western Ontario” , whose main claim was refused by the EPO for lack of inventive step, due to the fact that priority was lost because it was not assigned in the correct form.

That application claimed the priority of two US provisional applications, filed in the name of three inventors.

During its processing, the EPO requested proof of the assignment of the inventors’ right of priority to the university, and the university submitted only the application documents filed in the US, which included a box relating to “Assignee information”, where the university in question was listed.

The EPO pointed out that this brief information did not demonstrate an assignment of the inventors’ right of priority in favour of the university at the time the PCT was filed. In any event, according to the EPO’s criteria, this document indicated an assignment of ownership, but not an assignment of the right of priority, which are different things. Indeed, an original applicant automatically owns both rights (ownership and priority), but an assignment of ownership does not automatically imply an assignment of the right of priority.

In rejecting the priority claim, the EPO therefore considered that the effective date of the European patent application was the filing date of the PCT international application and not the priority date.

With the misfortune that between the (invalid) priority date and the filing date of the PCT international application, a document was published which, due to the loss of priority, became part of the prior art. This caused the EPO to reject the main claim of the European patent application for lack of inventive step in respect of this document.

Here is the relevant decision (decision T 0407/15) of 27 October 2020:

https://www.epo.org/law-practice/case-law-appeals/pdf/t150407eu1.pdf

These cases prove that the correct assignment of the right of priority of a patent is of crucial importance for the prosecution of a European patent application.

Failure to assign the right of priority at the proper time and in the proper manner is an error that cannot be remedied which, together with the disclosure of certain information between what should have been the priority date and the actual filing date, results in the loss of the patent.

Utmost care is a priority when we talk about the right of priority.

By María Ceballos (IP Attorney and Lawyer), Isabela Robledo McClymont (Lawyer) and Robert Roser (IP Attorney and European Patent Attorney) at CURELL SUÑOL SLP

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Assignment of Copyrights & Legal Implications

Copyright gives authors a bundle of personal property or economic rights in an original work of authorship. These rights include the rights to reproduce, create derivative works, distribute work to the public, publicly perform a work, publicly display visual works, and digitally transmit sound records. They belong exclusively to a copyright holder.

Usually, the copyright holder is the person who created the work. However, any of these economic rights, or any part of these economic rights, can be transferred. Under the Visual Artists Rights Act (VARA), an artist’s moral rights in a work of fine art can be waived but not assigned.

An original owner who assigns their copyright to someone else will not retain any right to control how the work is used.

The transfer of economic rights may be on an exclusive basis, which requires a written agreement, or a non-exclusive basis, which does not require a written agreement. Most commonly, this transfer is accomplished by assignment or license. Unlike a license in which the copyright owner maintains their ownership, an assignment is similar to a sale. The original copyright owner sells the rights to a third party and cannot control how the rights are used, just as they would not be able to control how personal property that they sold was used once it was transferred.

Generally, a license is preferable if a copyright holder expects to continue exercising interests and control over the work. For example, if you assign your copyright in a song to a music producer, the decision about whether to allow a film studio to use your song in a film will belong to the producer, not to you. If you license your copyright in a song in a limited capacity to a music producer, however, you will continue to be able to license your copyright in the song to a film producer.

Assignments can be used for many different purposes, such as security for debt, as an asset passed to heirs, or as part of the distribution of assets after a bankruptcy proceeding. Once you assign your rights to somebody else, however, you are permanently giving away your right to control the work. That means if you try to exercise any of the rights you have assigned, you are committing copyright infringement even though you created the work. If you assign your copyright to somebody else and regret the loss, you may be able to buy your copyright back from that person, but whether or not to sell it back to you is up to the assignee.

How Is Copyright Assigned?

Under Section 204 , a transfer of ownership is only valid if the instrument, note, or memorandum of transfer is in writing, signed by the copyright owner or their duly authorized agent. Generally, a certificate of acknowledgment is not required for the transfer to be valid, but it can be used as prima facie evidence that a transfer was executed if it is issued by someone authorized to administer oaths in the United States or, if the transfer is executed abroad, if the certificate is issued by a United States diplomatic or consular official, or a person authorized to administer oaths who also provides a certificate.

Formally recording an assignment with the Copyright Office is not required but can be advantageous.

You do not have to record an assignment in order to assign the interest. However, there are advantages to recording the assignment, such as creating a public record of the transfer details, giving constructive notice to members of the public, establishing priority of rights when there are conflicting transfers of ownership, validating the transfer of the copyright against a third party, or in some cases perfecting a security interest.

Last reviewed October 2023

Intellectual Property Law Center Contents

Intellectual Property Law Center
Copyright Infringement & Related Lawsuits
Copyright Ownership Under the Law
Assignment of Copyrights & Legal Implications
Copyright Licensing Under the Law
Copyright Registration Under the Law
Safe Harbors for Online Service Providers Under Copyright Law
Criminal Copyright Infringement Laws
Enforcement of Copyrights Through Lawsuits & Criminal Charges
Fair Use Defense to Copyright Infringement Lawsuits
Software Development Agreements & Related Legal Concerns
End-User License Agreements Imposing Legal Restrictions on Software
Lists, Directories, and Databases Under Copyright Law
Photos of Buildings and Architecture Under Copyright Law
Photos of Copyrighted or Trademarked Works & the Fair Use Defense to Infringement Lawsuits
Works in the Public Domain After Copyrights Legally Expire
Copyrights and Credits for Songwriters Under the Law
Music Samples and Copyright Infringement Lawsuits
Playing Music in Stores or Restaurants — How to Avoid Copyright Infringement Lawsuits
Consignment Sales by Artists to Stores & Legal Protections
Destruction of Copyrighted Works & Limited Legal Protections
Copyright Legal Forms
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Choosing Among Patent, Copyright, and Trademark for Legal Protection
Intellectual Property Law FAQs
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IMAGES

Assignment Rights Form
Assignment of slot based on priority
Assignment of Contract Rights
Assignment
Fillable Online Assignment of Priority Rights
Infographic: The Assignment of Rights in the Mechanic's Lien Process

VIDEO

Exercise of Priority Rights Application of Kilambay Plantation Corporation
BPMN 3123 MANAGEMENT ETHICS P GROUP ASSIGNMENT- GROUP 6 (HUMAN RIGHTS IN MALAYSIA)
Priority Date Priority rights & Right of Priority
Assignment 2
Assignment 8
Assignment 0

COMMENTS

The transfer of priority rights
It then went on to consider the requirements for assignment of the priority rights in relation to the filing of a European patent application. It decided that the transfer of priority rights must be proven in a formal way and that it was reasonable to apply an equally high standard of proof as required for an assignment of a European patent ...
PDF Transfer of Priority Rights Paris Convention Article 4a(1)
priority rights; ii) obtaining priority rights; iii) separation of rights; iv) invention rights and priority ... obtained by explicit assignment (i.e. the assignee of the Priority application must also be assigned the priority right). In most jurisdictions, mere consent of the applicant of the Priority application is not sufficient to enable ...
PDF Transferring Priority Rights
Separate later applications for each invention disclosed. Cross-assignment of priority rights not typically required. Divisibility of these rights can vary by jurisdiction. Priority right may be coupled to application and not split across inventions. May need to file a single later application and divide thereafter.
Validity and timing of Paris Convention priority rights claims
Paris Convention Priority Rights Introduction. ... (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. ...
PDF Guidelines for Transferring Priority Rights
Priority application itself. The act of making the application jointly with the owner of the priority rights can imply assignment of those rights to the extent that such assignment may be necessary. However, such a priority claim will only be valid in respect of subject matter that is disclosed in both the Priority and Later applications.
Deadly pitfalls and lessons learned
There is conflicting case law on whether assignments of priority rights need to be performed in writing in analogy to Article 72 of the EPC concerning the assignment of a European patent ...
Guidelines for Transferring Priority Rights
The act of making the application jointly with the owner of the priority rights can imply assignment of those rights to the extent that such assignment may be necessary. However, such a priority claim will only be valid in respect of subject matter that is disclosed in both the Priority and Later applications.
EPO Decision Significantly Relaxes Patent Priority Approach
Further, the Enlarged Board of Appeal's reference[15] to ex tunc assignment of priority rights in the context of the EPC relates to Article 61(1)(b) of the EPC, which permits a person who was entitled to the invention to claim the filing date of an existing application but does not involve the assignment of any priority rights, either ex tunc ...
EPO on the assignment of priority rights
EPO on the assignment of priority rights. In its decision on the merged proceedings G 1/22 and G 2/22, the Enlarged Board of Appeal recently confirmed that the EPO has competence to assess whether a party has a priority claim based on the EPC. This also applies if the priority right has been assigned to a legal successor.
Priority right
Priority right. In patent law, industrial design law, and trademark law, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the ...
IP Law Bulletin
Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it. This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment.
Valid claiming of priority rights in patent applications
A 'successor-in-title' can be proven by submitting a legal document indicating the transfer of rights e.g., an assignment. By corollary, the EPO also recognizes that a priority right is indivisible and thus, for joint applicants, all applicants must be named in the subsequent applications, for the application to validly claim priority.
Assigning priority rights in Europe
Firstly, the right to priority for a European patent application must ALWAYS be transferred before the filing date, even if under an applicable national law retrospective assignment of the right to priority is permissible. Secondly, the principle that the right to the priority application and the right to claim priority are separate rights ...
D Young & Co
According to established EPO case law, the independence of a priority right and the right to an application does not mean that a valid transfer of a priority right inevitably requires a separate and express assignment declaration. As such, the explicit transfer of a priority right may not be essential, when other evidence is sufficient.
301-Ownership/Assignability of Patents and Applications
A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...
PDF Assignment of Priority Rights
Assignment of Priority Rights I/ We, the undersigned ……..(Name of the Inventors)………………. assign to………(Name of the company ...
Transfer of Priority Rights
Transfer of Priority Rights. Mark Schweizer Tuesday, February 15, 2011 - European patent law , priority. The German Federal Patent Court held in a decision of 29 October 2010 ( Eilunterrichtung just published, full reasons not yet online) that the priority right can be assigned independently of the application that forms its basis.
Assignment of Contract Rights
The Concept of a Contract Assignment. Contracts create rights and duties. By an assignment The passing or delivering by one person to another of the right to a contract benefit., an obligee One to whom an obligation is owed. (one who has the right to receive a contract benefit) transfers a right to receive a contract benefit owed by the obligor One who owes an obligation.
Deed of Assignment of Priority Rights Sample Clauses
Related to Deed of Assignment of Priority Rights. Assignment of Proprietary Lease With respect to a Cooperative Loan, the assignment or mortgage of the related Proprietary Lease from the Mortgagor to the originator of the Cooperative Loan.. Supplement to the Security Agreement The security interests granted to the Collateral Agent herein are granted in furtherance, and not in limitation of ...
PDF Late-Executed Assignments in PCT Applications Can Impact Rights Across
617.489.0002 [email protected]. By Rebecca M. McNeill, Amanda K. Murphy, and Blair Rinne. Some companies opt to postpone the execution of patent assignments until after applications are filed, so they can officially list the application number and filing date on the assignment. Other times, inventors and attorneys revising ...
The Errors in the Assignment of the Right of Priority, or How to Lose a
Back to All Thought Leadership. The filing of a patent application gives rise to two different rights, namely the right derived from the application in question (ownership), and the right of priority, i.e. the right to claim the priority of a first application in a second patent application that must be filed within a certain period of time, which in the case of patents is of 12 months.
Assignment of Copyrights & Legal Implications
The transfer of economic rights may be on an exclusive basis, which requires a written agreement, or a non-exclusive basis, which does not require a written agreement. Most commonly, this transfer is accomplished by assignment or license. Unlike a license in which the copyright owner maintains their ownership, an assignment is similar to a sale ...
Priority of Assignment (POA) Rights Sample Clauses
Sample Clauses. Priority of Assignment (POA) Rights a. To honor the schedule development process, POA rights begin at the beginning of the third semester following the semester during which the initial request was made. For example, if the adjunct faculty member makes the request during semester six (6), POA rights take effect at the beginning ...
Opinion: Israelis have had enough of Netanyahu
It seems that staying in power became his top priority; higher, I believe, than the interests of the country. Frida Ghitis The proposed bill comes days after Gantz issued an ultimatum. Netanyahu ...

Privacy Overview

APPLICATION FILING

What is a priority right?

Who owns the priority right?

What is the time limit of the priority right?

What is the scope of the priority right?

Are there any exceptions from the “first application” requirement?

What are the most common scenarios that may result in priority claim deficiencies?

2. Possible deficiency no. 2: The content of the priority application differs from the content of the subsequently filed application claiming the priority right

3. Possible deficiency no. 3: Not the first, but the second application is claimed as a priority right

4. Possible deficiency no. 4: A failure to comply with all form requirements for claiming the priority right

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14.1 Assignment of Contract Rights

The Concept of a Contract Assignment

Method of Assignment

Acceptance and Revocation

Effect of Assignment

When Assignments Are Not Allowed

Material Change in Duties of the Obligor

Assignment of Personal Rights

Assignment Forbidden by Statute or Public Policy

Contracts That Prohibit Assignment

Future Contracts

Partial Assignments

Successive Assignments

Assignor’s Warranties

Key Takeaway

The Errors in the Assignment of the Right of Priority, or How to Lose a European Patent

Assignment of Copyrights & Legal Implications

How Is Copyright Assigned?

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