Priority Claiming: changes from the EPO

In our latest article, Two IP patent attorney Dr Coreena Brinck brings us up to date with latest changes at the EPO following a recent decision related to Priority Claiming.

The European Patent Office Enlarged Board of Appeal (“EboA”) recently handed down a joint decision on two cases, G1/22 and G2/22, that could make challenging the right to claim priority much harder at the EPO. It may also have a similar effect on priority claim challenges at the Unified Patent Court for proceedings involving unitary patents obtained via the EPO and for proceedings involving nationally validated EP patents brought before the UPC or national courts.

A priority right allows a patent application to benefit from an earlier patent application’s filing date when assessments are made regarding what prior art is relevant for novelty and inventiveness. If a document is found which was published within the priority year, the maximum time period for which priority can be claimed, attacking the priority right can mean the difference in a patent dispute between winning and losing.

The legal right to claim priority is, however, separably assignable from any rights to a patent for an invention. It is not unusual to file a patent application and later confirm the assignment of the right to an invention (including the right to claim priority) with a confirmatory agreement between the inventor(s) and the patent applicant(s). If there are changes in the inventor(s) or applicant(s) during the priority year, the right to the invention and to claim priority should be assigned to the new applicant(s) before any subsequent applications needing to claim priority are filed.

Handling issues like this is bread and butter work for patent attorneys providing, of course, they are made aware of any changes in sufficient time so that the right to claim priority is executed before the end of the priority year. The EPO decisions on G1/22 and G2/22 do not change how important it is to keep your patent attorney informed of any change of ownership or company structure so all necessary assignments are executed within the priority year. This ensures that the right to claim priority has been assigned in good time and can be validly claimed.

The specific circumstances around G1/22 and G2/22 address some of the problems with priority which may arise where the applicants change during the priority year and an international PCT patent application is filed with different applicants for different states. The appeals to the EboA which resulted in the decisions set out in G1/22 and G2/22 were requested by two EPO technical BoAs hearing cases T1513/17 and T2719/19 (OJ EPO 2022/A92). In these two cases, the EPO Opposition and Examining Divisions had to decide if the priority claim for the disputed patents was invalid. The inventors were named as applicants in a US patent application. In a subsequent PCT application, as was common at the time it was filed, the inventors were also named as applicants but only for the US, with the European applicants being separately designated. As there was intermediate prior art being used to attack the validity of the patents, making the priority claim vital, the European applicants sought to imply there was an assumption of an assignment of the priority right by virtue of the inventors being named as applicants for the US in the PCT patent application from which the EP patent application was derived. If successful, this could allowed them to benefit from the EPO approach when there are co-applicants designated in a subsequent EP filing application claiming priority from an earlier application that there is an assumed agreement between the applications to jointly claim priority.

The EP technical divisions hearing the oppositions referred to the Enlarged Board of Appeal on the following questions:

I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II. If question I is answered to the affirmative:

Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC in the case where

    1. a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
    2. the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
    3. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

These were answered as follows:

I). European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.

There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing regulations is entitled to claim priority.

II). The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).
In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.

What does this mean in practice?

These decisions raise the bar for providing evidence challenging that the right to claim priority was not effectively assigned in quite specific circumstances. Good practice remains executing all necessary assignments to the invention and of the priority right as soon as possible in the priority year.

If you would like support from our experienced patent attorneys to understand how this change could affect you, contact us via our website here.

EPO ends the ‘10 day rule’

The EPO ‘10 day rule’ on letter delivery ends on 1st November 2023.

Historically, the EPO sent out letters to applicants and their representatives by registered post. To make sure that nobody was disadvantaged by the differing lengths of time postal delivery took from the EPO to the various member countries of the European Patent Convention (EPC), Rule 126 EPC set out that letters were deemed to be delivered on the tenth day following it being handed over to the postal service (i.e. the date on the letter).

This is important because many time limits on European patent applications and patents are calculated from the deemed date of delivery.

Now that approximately 99% of communications from the European Patent Office (EPO) are sent electronically, the EPO is ending application of the ’10 day rule’, on the basis that it’s just not needed any more.

From 1st November 2023, all documents (decisions, summonses, notices and communications) sent by the EPO will be deemed to be delivered on the date given on the document. All time limits for any document dated on or after 1st November 2023 will be calculated from the date on the document – NOT 10 days later.

For any documents dated before 1st November 2023, the 10 day rule continues to apply for calculation of time limits.

The EPO has provided a handy illustration of this change, and how it affects time limit calculation, which you can see here: OJ EPO 2023, A29 – Notice from the European Patent Office dated 6 March 2023 concerning amended Rules 126, 127 and 131 EPC

Many attorney firms have routinely used the 10 day rule when docketing deadlines for responding to EPO communications, so will need to change their docketing systems to reflect the new regime. At Two IP we have always preferred to keep the 10 days in our back pocket as an emergency bit of extra time in the case of receiving very late instructions from a client or overseas attorney firm, so our systems are already fully compliant.

The rule change will make the calculation of time limits much simpler – if you add the 10 days at the end rather than the start, you can quite easily get the time limit wrong.

To ensure you stay up to date with any future procedural changes, join our mailing list to receive our monthly newsletter directly to your inbox.  Click here to sign up.

Enforcing patents in EU coastal waters

Two IP patent attorney Coreena Brinck recently spoke at the FICPI 21st Open Forum. In this article, Coreena shares some key points from her presentation ‘Enforcing patents at sea’, looking at how protection for shipping technology in EU coastal waters has been strengthen by the introduction of the Unitary Patent (UP).

Patent holders may not realise this but patent protection in the EU for technology which is essential onboard vessels gains hugely if they opt for the Unitary Effect when their European patent is granted. Not only does a Unitary Patent (UP) provide protection in 17+ EU member states but it also benefits from a more limited exclusion for vessels which are accidentally or temporarily within that territory.

Individual EU member states (as well as the U.K. which is no longer part of the EU) with coastal waters include exemptions from patent infringement for visiting vessels which are not registered in that specific state. For the UP however, the exemption applies only to vessels not registered in any of the EU member states where the UP has legal effect.

This means that legal action could be taken by a UP rights owner or a suitably authorised licensee in, say, France against a vessel flying a Maltese flag (Malta being one of the major shipping registers) even if that vessel was only temporarily or accidentally docked in France. If instead the European patent had been validated individually in Malta and France, then legal action could only be taken when the vessel was in Malta, as it would be flying a foreign flag in France and so entitled to the exemption if it had to temporarily or accidentally dock there.

What does this mean for ferry crossings in Europe? A recent U.K. case addressed the meaning of ‘temporarily’ in this context and found ferry crossings using vessels registered in a WTO member state or a state signatory to the Paris convention were also entitled to the exclusion if that state was not the state where the vessel was temporarily visiting. So for example a vessel registered in Ireland used for a ferry crossing to the U.K. is entitled to claim the exemption from infringing a U.K. patent. A U.K. registered vessel which is only temporarily docked in the U.K. and sat used on the same ferry service however would not be entitled to claim the exemption.

So for example, ferry crossings between say France and Italy by a vessel registered in Malta are now likely to infringe a UP when they are temporarily docked in either country whereas previously they would not be considered to have infringed either an Italian patent or a French patent!

If you are interested in finding out more on this subject, you can contact Two IP patent attorney Coreena Brinck here.

Life’s about the journey, not the destination

Have you ever thought about what you would do if you had more time outside of work?  Here Two IP consultant attorney Rachel Havard tells us about how she has been spending some of her spare time recently!

Thanks to support of the lovely folks at Two IP – Patent & Trade Mark Attorneys, I have found myself with more time than ever to commit to my favourite clients, without distractions of management responsibilities, traditional billing targets or commuting, and with energy in abundance for other exciting projects, such as All Roads Lead to Home.

It is my pleasure and privilege to have been involved in production of this micro-budget independent feature film which, due to the amazing vision and drive of its small but mighty cast and crew, looks a million dollars.

 

“When personal tragedies bring songwriters Amy and Matt together, they embark on a journey of healing, soul-searching and friendship, but where will it lead them?  A musical odyssey featuring several original songs and a pulsating music score. A love letter to 80s and 90s music.”

 

 

Since moving away from law firm partnership, I have been able to get on with the client work I enjoy most, as well as increasing my involvement as an executive producer of All Roads.  I have been a literal sounding board for my husband as he has composed many original songs for the movie, and have loved joining the cast as a supporting artist – in an office scene(!), mum-dancing at a rave, then cheering along with the crowd at one of the best gigs I’ve ever been to!

As for the next stage of the journey, All Roads Lead to Home has been selected for screening at the Birmingham Film Festival in November 2023, where it will receive its premiere.  Free tickets are available for the premiere screening here.  

Not only will the film be screened for the first time but it is also nominated for 3 awards: Best Local Film, Best Feature Film and The Audience Award.

It will be great to see All Roads Lead to Home released into the wild.  There’s nothing like it!

If you are an experienced attorney who would like to have the opportunity to spend more time on your hobbies, launching new ventures or more time with your family, then we would love to hear from you.  Book a confidential call with one of our directors here or contact us at hello@two-ip.com.