patent assignment right to claim priority

• Blog Homepage
• Blog Contributors

IP Law Bulletin

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.

• Follow us on Facebook
• Follow us on Twitter
• Follow us on LinkedIn

Recent Posts

• Cryptocurrency Valuation Swings and Centralization
• What Happens After a Patent Application Is Filed in the U.S.?
• USPTO Announces Extension of the Expanded Collaborative Search Pilot Program
• Protecting Intellectual Property FAQs
• Innovation in the Remote Work Environment: May You Flourish in These Challenging Times
• Coronavirus Impacts Intellectual Property Too: Update on Patent and Trademark Prosecution at Various IP Offices in the World
• Establishing and Protecting IP Rights Globally: A Case Study
• PTO Increases Annual Limit of Track One Prioritized Examination to Keep Pace with Applicant Interest
• International IP Expansion Considerations
• Patent Holders, Protect Your IP with These Tips on Patent Term Adjustment

Popular Topics

• Rules and Regulations
• Post-Grant Proceedings
• Patent Prosecution
• Patent Eligibility
• Patentable Subject Matter
• Post Grant Review
• Data Privacy

Contributors

• Kenneth R. Berman
• Patrick J. Concannon
• Emmanuel D. Filandrianos
• Micah W. Miller
• Thomas J. Tuytschaevers

• Our purpose and values
• Diversity and Inclusion
• Environmental, Social & Governance
• Our European offering
• Our background
• How we work
• Affiliations
• Strategic IP
• Advanced Engineering
• Electronics, Computing & Physics
• Life Sciences & Chemistry
• Clean Technology
• Food & Drink
• Medical Technology
• Robotics & Autonomous Systems
• Due Diligence
• IP Audit FAQs
• Patent Protection
• Patent Box FAQs
• Trade Mark Protection
• Translation Support
• Case studies
• Unified Patent Court
• Ten reasons to welcome UPC
• Unitary Patent Package videos
• Unitary Patent news
• Unitary Patent Package FAQs
• Unitary Patent comparison calculator
• Unitary Patent Package booklet
• Opt-outs in the sunrise period
• European Patent Convention States
• Overseas Registration of Patents, Trade Marks and Designs
• IP newsletter
• Video insights
• Web services
• Opportunities
• Our approach
• Trainee profile
• Becoming a Trainee Patent Attorney
• Free consultation
• Enquiry form

Claiming Priority at the EPO

10 March 2021

It is important to ensure that a patent application correctly claims priority.  There have been a number of cases before the EPO where this has not been done and the priority date has been lost, resulting in the application being refused, or the granted patent being revoked, due to prior art published during the priority period becoming citable.

What is the issue?

The right to claim priority from a priority application (e.g., a US provisional application) belongs to the applicant(s) of the priority application or their successor in title (Article 4 of the Paris Convention and Article 87(1) EPC).

The applicant(s) of the subsequently filed priority-claiming application (e.g., a PCT application) must have the right to make the priority claim at the time of filing.  The applicant(s) of the priority-claiming application have this right under the following circumstances:

• The applicant(s) of the priority-claiming application is/are the same as the applicant(s) on the priority application; or
• The applicant(s) of the priority application assigned the right to claim priority to the applicant(s) of the priority-claiming application before the priority-claiming application was filed.

Issues with Joint Applicants

When a priority application lists multiple parties as applicants (e.g., A and B), in the absence of any assignment of the right to claim priority to another party, both A and B must be listed as applicants on the priority-claiming application (see T382/07).

Furthermore, if A assigns the right to claim priority to C, and B assigns the right to claim priority to D, then both C and D must be indicated as the applicants on the priority-claiming application.

Issues with Employment Contracts

In the US, a priority application (e.g., a US provisional application) often lists the inventors as the applicants, whereas the priority-claiming PCT application lists the inventors’ employer as the applicant.  In such a situation, it is necessary to demonstrate that the right to claim priority was, prior to filing the PCT application, assigned to the employer.  The best way to demonstrate this is via a signed and dated assignment document; however, if such a document does not exist, the employment contract may be able to rescue the situation. In particular, if the employment contract states that the employee “hereby assigns all rights” relating to any invention made under the terms of their employment, it should be possible to successfully argue that the right to claim priority was assigned.  Importantly, if the employment contract states that the employee “hereby agrees to assign all rights” relating to any invention, this is generally not considered to be sufficient to demonstrate that the rights have actually been assigned.

Of course, if the applicant(s) of the priority patent application (e.g., the inventor(s)) have signed an employment contract in which they “hereby assign all rights” to their employer, then the right to claim priority has passed to the employer, and the employer needs to be indicated as the applicant on the priority claiming application. Accordingly, there may be situations where the inventors are indicated as the applicants on the priority application and on the priority-claiming application, but, because of the employment contract, the right to claim priority did not belong to the inventors at the time the priority-claiming application was filed. This can result in the priority claim being lost.

Issues with PCT Applicants in Respect of the US Only

In some situations, a priority patent application (e.g., a US provisional application) will list the inventors as the applicants, whereas the priority-claiming PCT application lists the inventors as applicants in respect of the US only, and the employer as the applicant in respect of all other states.  In the absence of the priority claim being assigned from the inventors to the applicant prior to the PCT filing date, will the indication of the inventors being applicants in respect of the US only be sufficient to establish that priority has been correctly claimed? This matter is currently being considered by the EPO Board of Appeal in two cases (T2749/18 and T1837/19), but a decision is not expected for a while.

Is Entitlement Relevant?

The question of who is entitled to the invention is irrelevant when determining who has the right to claim priority (see T 5/05).  The right to claim priority belongs to the party or parties indicated as the applicant(s) on the priority application, irrespective of whether they are entitled to the invention or not.

  What to do

When filing a priority-claiming application it is necessary to determine who has the right to claim priority.  In the absence of any assignment (either an actual assignment or via the employment contract) the right will belong to the party or parties indicated as the applicant(s) on the priority application. The party or parties indicated as the applicant(s) on the priority application should therefore be indicated as the applicant(s) on the priority-claiming application.

When there is a clear assignment of the right to claim priority from the party or parties indicated as the applicant(s) on the priority application to another entity, that entity should be indicated as the applicant on the priority-claiming application.

When it is not clear whether the right to claim priority from the party or parties indicated as the applicant(s) on the priority application has passed to another entity, it is generally recommended to file the priority-claiming application listing the party or parties indicated as the applicant(s) on the priority application and the entity to which the right may have been transferred. Any necessary changes to the applicants to correctly reflect the ownership can be made subsequently, but on filing the priority-claiming application it is essential that all parties that have, or may have, the right to claim priority are listed as applicants.

Adrian Tombling Life Sciences & Chemistry group

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP March 2021

• General (47)
• IP, Industry and Case Law (216)
• Uncategorized (2)
• Unitary Patent (47)
• August 2024
• February 2024
• January 2024
• December 2023
• November 2023
• October 2023
• September 2023
• February 2023
• January 2023
• December 2022
• November 2022
• October 2022
• September 2022
• February 2022
• January 2022
• November 2021
• October 2021
• September 2021
• August 2021
• February 2021
• January 2021
• December 2020
• November 2020
• August 2020
• January 2020
• November 2019
• October 2019
• August 2019
• January 2019
• December 2018
• November 2018
• October 2018
• August 2018
• January 2018
• December 2017
• November 2017
• September 2017
• August 2017
• February 2017
• January 2017
• December 2016
• November 2016
• October 2016
• September 2016
• August 2016
• February 2016
• January 2016
• November 2015
• October 2015
• September 2015
• August 2015
• February 2015
• January 2015
• December 2014
• November 2014
• October 2014
• August 2014
• January 2014
• October 2013

• follow us on twitter
• join us on linked in
• see us on youtube
• Terms of Business
• Web Terms of Use
• Accessibility
• Modern Slavery Act
• Legal & Regulatory notices

Privacy Overview

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.

Sharing IP information such as new legislation, relevant case law, market trends and other topical issues is important to us. We send out our IP newsletters by email about once a month, publish IP books annually, share occasional IP news alerts and also invitations to our IP events such as webinars and seminars. We take your privacy seriously and you can change your mailing preferences or unsubscribe at any time.

To sign up to our marketing communications, please fill out this form.

Your contact details

What would you like to hear from us about?

You can contact us at [email protected], telephone +44 (0) 20 7269 8850 or write to us at D Young & Co LLP, 3 Noble Street, London, EC2V 7BQ to update your preferences at any time.

We use cookies in our email marketing communications. You can view our privacy policy here and cookie policy here .

Almost finished! Submit this form and we will send you an email for you to confirm your preferences.

European Patent Office Makes Major Changes in Priority Entitlement

The Enlarged Board of Appeal of the European Patent Office (EPO) has issued a new dual decision – G1/22 and G2/22 – dealing with the assessment of priority rights at the EPO. The decision represents a significant break from the previous practice of the EPO and seems to adopt a much more ‘pro-applicant/patentee’ approach when assessing these rights and their effects on European patents and patent applications. In particular, the onus on the applicant to demonstrate their right to claim priority has been greatly reduced, with the threshold for opponents attacking this right in opposition proceedings now significantly higher.

The two key questions answered by the Enlarged Board of Appeal are:

• Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) of the European Patent Convention (EPC)?
• If question 1 is answered in the affirmative, can party B validly rely on the priority right claimed in a Patent Cooperation Treaty (PCT) application for the purpose of claiming priority rights under Article 87(1) EPC in a case where:
• 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 protections.
• The PCT application claims priority from an earlier patent application that designates party A as the applicant.
• The priority claimed in the PCT application is in compliance with Article 4 of the Paris Convention.

In summary, the board’s answer to both questions is an emphatic yes .

In more detail, referring to the first question, the board drew a clear distinction between competency to ‘decide a dispute as to whether a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application’, where national courts are competent, and priority rights, where the board held that ‘no national laws are involved when a priority right is created or claimed for a subsequent application’. The board further reasoned that if the EPO was not competent to assess priority rights under its own law (i.e., not applying national law), then ‘situations could arise in which the EPO has evidence potentially affecting the patentability of an invention but cannot use such evidence in its decision on patentability’. This stems from the effect a valid priority right has on the assessment of prior art and is, evidently, a situation which is desirable to avoid. This scenario also is clearly distinct from entitlement proceedings, where the EPO is not competent, as the EPO’s assessment of patentability of the invention, and the prior art, should not be affected by the identity of the applicant (in part because the EPO does not provide carte blanche grace periods).

Accordingly, the board has decided that the EPO is competent to determine whether a priority right is validly claimed – i.e., whether a party is the successor in title required by the EPC – and that this assessment should be made using its own law and not the national law of the relevant member states. Furthermore, the board has decided that ‘the autonomous law of the EPC should not establish higher formal requirements than those established under national laws that may be relevant in the context of a European application’, and moreover that ‘the EPO should adapt itself to the lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances’. That the transfer of a priority right should not need to meet the same threshold as the EPO requires for the assignment of a European application (i.e., in writing and signed by both parties) is directly stated: ‘[T]he autonomous law of the EPC should not require that the assignment of priority rights has to be in writing and/or has to be signed by or on behalf of the parties to the transaction’.

Indeed, the board’s decision even implies another change from the practice, to date, that the transfer of priority rights must have occurred prior to the filing date of the European application, providing the rationale that ‘[i]f there are jurisdictions that allow an ex post (“nunc pro tunc”) transfer of priority rights … the EPO should not apply higher standards’. It is cautioned, however, that ‘the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which priority is claimed for the subsequent European application’. That said, it is possible to add a priority claim to a European patent application 16 months from the earliest priority date, so there is – theoretically – a situation where an ex post transfer could be applied, though we expect the first cases to do so to be brought under significant scrutiny by third parties, although their ability to do so has been curtailed.

In line with the board’s new permissive approach to the transfer of priority rights, this ‘rebuttable presumption’ that the priority claim is valid ‘involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing’. This means that – for example, in opposition proceedings – an opponent cannot ‘just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to priority’. This higher burden on opponents, along with the more relaxed stance of the EPO, seems likely to reduce EPO proceedings – such as oppositions – where the validity of a priority claim on the basis of the patentee’s entitlement to claim priority is put to issue. It is important to note, however, that national courts will still have jurisdiction over granted European patents and are not beholden to the EPO’s approach or decisions. Thus, third parties are not necessarily prevented from raising this issue in national proceedings where a more stringent test might be applied.

Referring to the second question, it is perhaps unsurprising that the application of the answer to the first question has led to the board agreeing with the referring decision that ‘the mutual filing demonstrates – absent indications to the contrary – the existence of an implicit agreement between party A and party B, conferring party B the right to benefit from the priority for the EPC territory’. In order for this implied agreement to be questioned, the board considered that ‘evidence would be needed that an agreement on the use of the priority right has not been reached or is fundamentally flawed’. Situations such as those seen with pre-America Invents Act (AIA), US-originating PCT applications – where the US provisional priority filing is filed in the names of the inventors and the resulting PCT application designates the inventors as applicants for the US where, for example, their employer is the applicant elsewhere – appear to be officially resolved at the EPO for now.

Ultimately, the position adopted by the Enlarged Board of Appeal in response to the two questions at issue represents a significant softening of the EPO’s historically strict position on the assessment of priority. Whether this change in attitudes will be reflected in the courts of the EPO’s member states in the future – or whether applicants will potentially remain beholden to the EPO’s previous approach if they wish to enforce patent rights nationally – remains to be seen.

Related insights

Related services, related contacts.

This content is provided for general informational purposes only, and your access or use of the content does not create an attorney-client relationship between you or your organization and Cooley LLP, Cooley (UK) LLP, or any other affiliated practice or entity (collectively referred to as “Cooley”). By accessing this content, you agree that the information provided does not constitute legal or other professional advice. This content is not a substitute for obtaining legal advice from a qualified attorney licensed in your jurisdiction and you should not act or refrain from acting based on this content. This content may be changed without notice. It is not guaranteed to be complete, correct or up to date, and it may not reflect the most current legal developments. Prior results do not guarantee a similar outcome. Do not send any confidential information to Cooley, as we do not have any duty to keep any information you provide to us confidential. This content may be considered Attorney Advertising and is subject to our legal notices .

• Search Site

Headquarters

501 Boylston Street, 10th Floor

Boston, MA 02116

(617)-737-5010

[email protected]

Search our Site

On-demand insights, when obtaining a patent assignment just isn’t enough.

By Peter Gordon, • February 11, 2019

Many university technology managers are familiar with the following scenario: an invention disclosure is received, often at the last minute before a publication; a provisional patent application is filed; a full application is later drafted and filed as a PCT application; and finally, national phase applications are filed, at least in the U.S. and perhaps other countries. At some point along this process, and often after the U.S. national phase applications are filed, the inventors’ declarations and assignments are executed.

Technology managers understand the importance of actually obtaining an executed assignment, due to the U.S. Supreme Court’s decision several years ago in Stanford v. Roche . They also are well aware of the obvious problem with waiting to obtain an assignment: an inventor may refuse to sign or could leave their position before being asked to signed documents. However, technology managers also need to pay attention to other esoteric aspects of patent law, including claiming “rights of priority,” identifying the “applicant,” and timing of execution of assignments. Failure to pay attention to these finer points could potentially result in a loss of, or an increased cost for retaining, rights outside the U.S.

For example, when a provisional patent application is filed, the named applicant is the entity which owns the right to claim priority to the provisional.  A later PCT applicant must own this right for it to be validly claimed.  If the applicant for the provisional application is the inventor, and the applicant for the PCT application is the university, then a claim of priority to the provisional application might not be valid. If the PCT application is not entitled to the priority claim, then intervening prior art, such as the inventor’s own publication, could result in lack of novelty of non-U.S. national phase applications based on that PCT application. Obtaining an assignment prior to filing the PCT application, or naming the university as the applicant on the provisional application, may resolve the problem.

To better protect the university’s IP rights outside the U.S., we recommend the following:

• Ensure an Application Data Sheet is filed in a U.S provisional patent application.

In the U.S., an Application Data Sheet (“ADS”) is a form that allows someone other than the inventor to be designated as the “Applicant” of a U.S. patent application.  More precisely, the ADS is the only way to designate an entity, other than the inventor, as the Applicant of a U.S. patent application. You might ask, why isn’t an ADS always filed in a provisional application as a matter of course? Quite simply, it is not required and, therefore, often skipped. Also, for an entity to be an Applicant, there must be an assignment, or an obligation to assign, to that entity – making filing of the ADS a good opportunity to check those assignment obligations! The ADS should be filed at the time of filing a provisional application, although it can be filed later with a little extra paperwork (if diligence cannot be timely completed to confirm that all inventors have an obligation to assign).

• Ensure that the applicant owns the right to claim priority at the time of filing a later application

To establish the right, in a later application, to claim priority to a prior application, one must either:

• Match the name of the Applicant on the later application to the name of the Applicant on the prior application. For example, by filing an ADS in a provisional application specifying an Applicant, this same Applicant can be named as the applicant on a PCT application. Or, if no ADS was filed in the provisional, then the PCT Request should name the inventors as the Applicant on the PCT application.
• prior to filing the later application, ensure that there is an assignment of the prior application to the new Applicant and that the assignment assigns the right of priority. Here, it is important to ensure that the assignment document specifically mentions the right of priority. It is also a good idea to consider inventorship, ownership, and applicant status of any new matter introduced in the later application. [1]
• Set expectations about executing legal documents early in the process.

Simply recommending that inventors sign documents early in the patent process, preferably at the time of filing, doesn’t help in situations where applications are filed at the last minute or when e-mails and phone calls are ignored. A more practical recommendation for addressing this problem is to start by setting expectations.  Let inventors know, at the beginning of the process, that legal documents will be signed as part of completing the application for filing. Instruct prosecution counsel to file each patent application with signatures from the inventors, to discuss this expectation with the inventors, and communicate promptly about any problems. By setting such expectations early in the process, you are more likely to obtain those signatures, or otherwise identify earlier if there will be a problem in obtaining signatures. Even if a provisional is filed without an ADS or executed assignment, taking longer than three months after filing to submit these documents should raise a flag.

• Customize your docketing system to include earlier dates for executing documents and verifying applicant status.

Docketing systems generally docket only required dates by default. Since the above- recommended actions are not required , it is important to customize the docketing system and otherwise create and implement a process around them.  For example, docket an action of “Verify ADS filed” within three (3) months of filing a provisional application.

We routinely work with TTOs to help improve internal processes to avoid issues like those described above.  We advise our TTO clients to consider incorporating such recommendations into their day-to-day internal processes, such as by clearly defining responsibilities of the inventors, outside counsel, and the technology transfer office, using checklists and the docketing system to implement processes, and conducting periodic portfolio reviews to detect potential issues and ensure compliance.

If you have questions about internal processes for managing patent filings, our team would be happy to help. Feel free to contact Peter Gordon directly at [email protected] or to request more information by visiting our Contact Us page.

[1] For some countries, an assignment also needs to be signed by the assignee, to indicate “acceptance”. Having the applicant defined as the university at the outset may reduce the impact of this issue.

Leave a Reply Cancel reply

You must be logged in to post a comment.

T 2360/19 further confirms the EPO’s U-turn regarding the standard for assessing the legal right to claim priority

Posted: September 5, 2024

In our previous article , we outlined how the Enlarged Board of Appeal decision’s G1/22 and G/22 indicated that the EPO were adopting a patentee-friendly approach to assessing the validity of the priority claim in Europe.

Historically, the EPO previously required  all  applicants named on a priority application, or their successors in title, to be named as applicants on the subsequent application claiming priority.  This is known as the “all applicants approach”.

G1/22 and G/22 centred on the PCT joint applicant’s approach where the applicants between the priority document and the PCT application were common for the US only.  In this scenario, the Enlarged Board of Appeal confirmed that the EPO will now presume that the legal right to claim priority is valid, by way of an implicit agreement, unless the opponent can provide evidence to the contrary.

However, there was some doubt about whether the same patentee-friendly approach would be applied to a priority claiming scenario where the applicants between the priority applicant and the priority claiming applicant are not in common for  any  state (not even the US).

The EPO’s relaxed stance on priority for such a scenario has now been confirmed by the recently published Board of Appeal decision T 2360/19.

T 2360/19 relates to a key CRISPR patent (EP2784162) owned by the Broad Institute, MIT and the President and Fellow of Harvard College.

EP2784162 claimed priority to 12 US provisional applications – numbered as P1-P12.

Dr. Marrafini was named as one of the applicants/inventors on P1, P2, P5 and P11, but neither Dr Marrafini nor his successor in title (Rockefeller University) were named as an applicant on the subsequent priority claiming PCT application.

During opposition, the opposition division found under the previous “all-applicants approach” adopted by the EPO that the legal right to claim priority to P1, P2, P5 and P11 was therefore invalid because there was no evidence of the transfer of rights from Dr. Marrafini or Rockefeller University to the other co-applicants before the PCT filing date. Hence, the patent was found to lack novelty over intervening prior art published within the priority period.

The decision

The patentee appealed the opposition division’s decision. The appeal proceedings were stayed pending the outcome of G1/22 and G/22.

During the appeal proceeding, the opponents maintained their position that there was no evidence on file of an explicit or implicit transfer of priority rights between Dr. Marrafini or Rockefeller University to the other co-applicants and therefore the priority right to P1, P2, P5 and P11 was invalid.

Oral proceedings were held in March 2024 where the Opposition Division’s decision to revoke the patent under novelty was set aside.

The written decision has just been published and confirms that the EPO will automatically consider the entitlement to claim priority to be valid, based on the concept of an implicit agreement on the transfer of the priority right from the priority applicant to the subsequent applicant, unless evidence is provided to the contrary.

In this case, there was an inventorship dispute in the US regarding whether Dr. Marraffini should be named as an inventor of the PCT application from which EP2784162 is derived. This dispute was settled in 2018 following arbitration where the arbitrator decided that Dr. Marraffini should not be named as an inventor and Rockefeller University should not be named as an applicant of the PCT application.  The settling of the inventorship dispute was considered by the Board of Appeal to be “ an ex-post facto transfer agreement .” between Dr. Marrafini, Rockefeller University and the remaining applicants regarding the priority rights.

However, the Board stated that even if such settlement of an inventorship dispute did not exist, the legal right to claim priority would still be assumed to be valid because the opponents filed no evidence to rebut this presumption.

Another important point is that the opponents provided evidence during the appeal proceedings to show that retroactive assignments of priority rights were not always operative under US law.  However, the Board used G1/22 and G2/22 to confirm that a priority right and its transfer is a matter exclusively governed by the autonomous law of the EPC , and therefore they disregarded any application of US national law regarding retroactive assignments.

The case will now be remitted back to the Opposition Division to discuss the remaining grounds of opposition.

Practical implications

This decision confirms that G1/22 and G2/22 significantly changed the interpretation of the law relating to priority, essentially reversing the burden of proof for challenging the legal right to claim priority.

The presumption of a validly claimed priority is confirmed to apply in any scenario where the applicants named on a priority application and a priority claiming application are not identical, even where a plurality of co-applicants named on a priority application only partly overlaps with the co-applicants named on the subsequent application.

The decision reinforces the high burden on an opponent to challenge a priority claim – who must now provide evidence that an implicit or explicit transfer agreement does not exist.

This decision also confirms that retroactive transfer agreements concerning the priority rights will be accepted by the EPO, even if not valid under national law.

• Recent Posts

• T 2360/19 further confirms the EPO’s U-turn regarding the standard for assessing the legal right to claim priority - September 5, 2024
• First UPC preliminary injunction granted to biotech company - September 26, 2023
• Cultivated “clean” meat sector gathers pace - July 19, 2023
• Privacy Overview
• Strictly Necessary Cookies
• Analytical Cookies
• Cookie Policy

We use necessary cookies to make our site work. We’d also like to set optional analytics cookies to help us know how you use our website, which improves your online experience and our services. We won’t set optional cookies unless you enable them. To read more about how we use cookies, see our Cookies Policy . 

Using this tool will set a cookie on your device to remember your preferences.

You can change your preferences at any time via the settings icon at the bottom left of this website or see our Cookies Policy

These enable core functionality such as security, network management, and accessibility. You may disable these by changing your browser settings, but this may affect how the website functions.

These help us take and analyse visitor information, which assists us to improve our website and your user experience. 

Please enable Strictly Necessary Cookies first so that we can save your preferences.

More information about our Cookie Policy

• Our Professionals
• Our Insights
• Your Finnegan
• Articles & Books
• Ad Law Buzz Blog
• At the PTAB Blog
• European IP Blog
• Federal Circuit IP Blog
• INCONTESTABLE® Blog
• IP Health Blog
• Prosecution First Blog
• Events & Webinars
• Unified Patent Court (UPC) Hub

Priority Pitfalls in European Patent Applications Based on U.S. Priority Applications

November 2014

Full Disclosure Patent Newsletter

By Martin D. Hyden

Authored by Martin D. Hyden and Amanda L. Lutz

Article 87 of the European Patent Convention (EPC) allows applicants for European patent applications to claim the benefit of the filing date ("priority date") of an earlier application ("priority application") under certain conditions. While Article 87 EPC broadly corresponds to Article 4 of the Paris Convention, the European Patent Office's (EPO) implementation of Article 87 EPC can lead to denial of priority claims and, ultimately, loss of applicant's rights. Without careful attention by practitioners, claiming the benefit of a U.S. priority application may result in loss of rights.

The EPO Enlarged Board of Appeal (EBA) specifically considered the interpretation of Article 87 EPC in its decision G2/98. The following key points arise when claiming priority under Article 87 EPC:

1. The European application must be for the same invention as the priority application, and 2. The priority application must be the first application for protection of the invention and must not be filed more than twelve months before the European application's filing date.

Although the EPO does not routinely examine priority claims, to avoid the risks of improperly claiming priority—and detrimentally relying on invalid priority claims—practitioners should carefully assess the contents of the priority application and European application before filing to ensure the claimed priority is valid. 1 Further, during prosecution of the European application, practitioners should cautiously amend the European claims to maintain the valid priority claim. Scenarios exemplifying some common priority pitfalls are discussed below.

Priority Claims to the "Same Invention"

According to the EBA in G2/98, the EPO acknowledges priority claims for the "same invention" "only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole." 2 Thus, the EPO priority standard requires not only that all elements of a claim be explicitly or implicitly disclosed in the priority application, but that any claimed combination also be so disclosed. This standard is the same applied to determine the validity of added subject matter by amendment under Article 123(2) EPC. 3 Simply stated, if a claim could not be added to a priority application without contravening Article 123(2) EPC, it cannot validly claim the priority date.

1. Claiming Priority to a U.S. Provisional Application Filed Without Claims

U.S. provisional applications can be filed without claims, and in some cases with as little as a single drawing. Although these applications qualify as potential bases for priority under Article 87(3) EPC, they routinely fail to provide valid priority dates for claims generalizing their specifically disclosed features. Even the EPO's "whole contents" approach in Article 88(4) EPC, which recognizes that priority may be granted for subject matter disclosed but not claimed in the priority application, offers scant assistance in establishing priority.

Indeed, EPO practice under Article 123(2) EPC routinely denies broadening amendments such as attempts to define a range based only on a series of discrete values or introducing generalized terms from discrete example (e.g., broadening "diesel engine" to "combustion engine"). Without any claims or statements corresponding to claims in the priority application, the claims added to the European application often cannot be clearly and unambiguously derived from the priority application.

2. Claiming Priority to a U.S. Provisional or Nonprovisional Application Filed with Very Broad Claims

Including only very broad claims in a priority application does not guarantee the priority of narrower claims falling within their scope. A priority application that recites, for example, a range or a genus does not necessarily support narrower claims presented in the European application because the range or genus claim in the provisional application cannot be separated into a narrower subgenus or species without supporting direct and unambiguous disclosure in the application as filed. 4

3. Claiming Priority to a U.S. Provisional or Nonprovisional Application Filed with Very Narrow Claims

The analogous case involving only narrow claims can have similar problems. Although the specific claims and examples may be sufficient to support a broader claim, without the unambiguous disclosure of the broader claim scope, no valid priority may be claimed.

As seen in each of the three preceding scenarios, either the lack of corresponding claims or the lack of disclosure providing direct and unambiguous derivation of the claim scope can be fatal to a priority claim in a later European application. When filing an application that is to serve as a basis for priority, practitioners must consider providing a proper basis for later claims at the EPO.

Practitioners may avoid the traps in the preceding scenarios by incorporating language that closely resembles future claim language in a claimless provisional application, including alternative embodiments and definitions of subgenus and species falling within the scope of broad claims, and unambiguously disclosing broader claim scope in priority applications with narrow claims.

Priority Claims to the "First Application"

European applications claiming priority to U.S. continuation-in-part (CIP) applications raise unique questions of priority under Article 87(1) EPC regarding the "first application" for protection of the claimed invention. Because CIP disclosures include content from an earlier parent application and later new matter, valid priority claims turn on whether the European application claims relate only to the new matter in the CIP. 5 The critical point when analyzing the validity of a CIP priority claim is to determine if the CIP is the first application to disclose the invention claimed in the European application. 6

1. Support for the European Application Claims Only Found in a CIP

A European application properly claims priority to a CIP where the European application claims relate solely to new matter contained in the CIP (i.e., cannot be derived from the parent application). The CIP is the first application for the invention of the new matter according to Article 87(1) EPC.

2. CIP New Matter Is an Example Wholly Encompassed by the Parent Application

Where the CIP's new matter does not add a new element to the invention covered by the parent application, the parent application remains the "first application" disclosing the invention claimed in the European application. As such, the parent application alone supports a valid priority claim.

A priority claim to the CIP may be valid, however, if a dependent claim in the European application cannot be derived from the parent application alone.

3. European Application Claims Read on Subject Matter of Parent Application

As in scenario 2, a European application cannot validly claim priority to a CIP when the European claims read on the subject matter of the parent application. The "first application" to disclose what the European application claims recite is the parent application.

These three scenarios are particularly relevant where the parent application was filed more than twelve months before the European application. Outside of this priority period, and when the European application's claims are not entitled to the CIP's priority date, the claims take the filing date of the European application. Any disclosures made before the European application's filing date can be used to attack the validity of the claims, including disclosures made by the applicant and publication of the parent application. A parent application published after the filing date of the European application by the EPO or as a PCT application may still qualify as prior art for novelty purposes under Article 54(3) EPC.

Under these circumstances, practitioners may avoid risking the validity of a European application due to an invalid priority claim to a CIP by only reciting claims that are exclusively based on the CIP application.

Amendments During Examination

Even after ensuring that a European application as filed contains a valid priority claim, applicants risk losing the claimed priority during prosecution through claim amendments. To maintain the claimed priority, practitioners should consider the content of the priority application and attempt to introduce amendments that are clearly and unambiguously supported in the priority application.

The EPO's strict priority standard means that practitioners must pay close attention to the preparation of the priority application so it can adequately support potential claims that may be envisaged. Failure to secure proper priority may leave an application vulnerable to the applicant's own disclosures.

1 Where an application is filed under the Patent Cooperation Treaty (PCT), the PCT filing date is taken as the filing date under the EPC and not the date of entry into the European regional phase.

2 Enlarged Board of Appeal in G2/98, [2001] OJ EPO 413, 433.

3 Art. 88(4) EPC (recognizing priority claims to any matter disclosed in the priority application, not just to the claims of a priority application); Guidelines for Examination F.VI, 2.2.

4 Guidelines for Examination F.VI, 2.2.

5 Id . at F.VI, 2.4.4.

6 See id.; id . at F.VI, 1.4.1.

Originally published in Finnegan's Full Disclosure Newsletter , November 2014. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.

Related Offices

Washington, DC

Related Insights

2024 Corporate IP Institute

October 29-30, 2024

2024 AIPLA Annual Meeting

October 24-26, 2024

National Harbor

Hybrid Conference

2024 California Intellectual Property Law Institute

October 21-22,2024

San Francisco

2024 Licensing Executives Society USA – Canada Annual Meeting

October 20-23, 2024

New Orleans

2024 Global Patent Litigation FORUM

October 17, 2024

Auto IP Europe 2024

October 8, 2024

WTR Live: 2024 Brand Strategy Summit USA

October 8-9, 2024

4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA

October 8-24, 2024

2024 Corporate Counsel Women of Color: Career Strategies Conference

October 2-5, 2024

Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.

We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy .

NEW: Ad Law Buzz Blog

Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.

• More Blog Popular
• Who's Who Legal
• Instruct Counsel
• My newsfeed
• Save & file
• View original
• Follow Please login to follow content.

add to folder:

• My saved (default)

Register now for your free, tailored, daily legal newsfeed service.

Find out more about Lexology or get in touch by visiting our About page.

Managing priority in US and European patents

While protecting patentable innovations in the US and Europe is the foundation of many corporate patent portfolios, differences in priority arrangements in the US can cause issues obtaining subsequent protection in Europe. Novagraaf’s Nadège Lagneau offers advice on overcoming the priority disconnect.

Patent priority arrangements made according to US practices can lead to issues with European patent (EP) applications, as was highlighted by the European Patent Office’s ruling on the  CRISPR gene-editing patent  last year. Vigilance is recommended therefore where protection in Europe is also desired for US inventions.

Avoid potential pitfalls

There are a number of areas where applicants may get caught out, but disparities over ownership pose some of the biggest risks.

This is because the owner of a US patent application is typically its inventor (unless otherwise agreed by contract), even if that inventor is a salaried employee. In Europe, on the other hand, patent applications are filed (including in the EPC and PCT systems) in the name of the employer, as employers are deemed to own the innovations of a salaried inventor (unless otherwise agreed by contract).

Differences in ownership between the priority US patent application (in the name of the inventor) and a subsequent patent application (in the name of the employer) claiming priority can cause problems in Europe. If the ownership of the right of priority cannot be conclusively demonstrated, that priority claim may be challenged in opposition proceedings, leading to its invalidation.

That causes additional problems, as the loss of a priority claim then generates the very real risk of the patent being revoked due to the publication of prior art in the dates between the filing of the priority US patent application and that of the subsequent application.

Overcoming the challenge

Although the America Invents Act (AIA) provides that US patent applications can now be filed by designating employers as applicants/owners, under US law, inventors named on a US patent application are presumed to own the invention, except in the case of contrary contractual provisions (e.g. an employment contract or via assignment). In the absence of a specific assignment signed by the inventors, it is up to the employer to prove that they are indeed the owner of the rights to the invention that is the subject of the priority patent application.

As such, for a first patent filing in the US – whether a provisional or regular patent application – it is generally advisable to:

• Have the inventors sign an assignment (of their rights to the invention) shortly after the filing and, in any event, before the filing of the subsequent patent application (eg PCT or EP) claiming priority of the US patent application;
• This assignment should include the number of the US patent application (plus its filing date and title) that is the subject of the priority US patent application, and also cover the assignment of the priority right (which is a right distinct from the right to the invention) to their employer/supervisory institution.
• Register the assignment(s) at the USPTO (usually one assignment per employer/parent institution); and
• Ensure the above is completed before filing the subsequent patent application (e.g. PCT or direct EP patent filing) claiming priority of the US patent application.

Following these steps is a simple and inexpensive precaution that can help the applicant to avoid complicated debates in Europe (e.g. if the priority claim is challenged by a third party in opposition), and makes it possible to secure the priority claim in the case of a first patent filing in the US.

As a general rule, it is also advisable to ask any related partners/institutions with whom the first US patent application is filed to follow these steps, whether or not these partners or institutions are based the US.

Filed under

• European Union

Organisations

• European Patent Office
• Leahy-Smith America Invents Act 2011 (USA)

If you would like to learn how Lexology can drive your content marketing strategy forward, please email [email protected] .

Related practical resources PRO

• How-to guide How-to guide: How to understand and implement the ‘E’ in environmental, social and governance (ESG)
• How-to guide How-to guide: Avoiding false or misleading advertising (USA)
• Checklist Checklist: Appointing a local distributor  (USA)

Related research hubs

Guide to Foreign Priority Patent Filings in the USA

By austen zuege, introduction.

The following is a guide to U.S. patent filings with the U.S. Patent & Trademark Office (USPTO) based on foreign or international priority. Included is a discussion of Paris Convention direct filings and Patent Cooperation Treaty (PCT) national phase entries in the USA. This guide is intended primarily for the benefit of patent attorneys in other countries seeking to understand the available options and legal requirements for U.S. counterpart patent filings. It encompasses recommended practices, common mistakes, and common questions, with emphasis on areas of U.S. patent law and practice that may differ from those of other countries.

Table of Contents:

Types of u.s. patents and patent applications, non-inventor applicant(s): entitlement, large/small/micro entity size determination for official fees, extra claim fees and multiple dependent claims.

• Application Size and Sequence Listing Fees

DOCX Format and Non-DOCX Surcharge

Translations, certified copies, inventor oaths/declarations, basic requirements, recording assignments, licenses, and the like, dealing with a defective or unrecordable assignment, power of attorney, general guidelines for signature blocks, authority to sign.

• Electronic Signatures Acceptable on Inventor Oaths/Declarations and Powers of Attorney

Special Considerations for Assignment Signatures

Duty of Disclosure, Candor, and Good Faith

Foreign filing licenses, accelerated, prioritized, and expedited examination, early national phase entry, deferring or suspending examination, missed filing deadlines.

• Patentability and Patent Eligibility
• Specifications (Detailed Descriptions of Inventions)

Special Considerations for Design Patent Applications

There are three types of patents in the United States:

But utility models are not available.

There are also a number of different types of patent applications in the USA:

• Provisional ( § 111(b) )
• Divisional ( § 121 )
• Continuation
• Continuation-in-Part (CIP)
• PCT International Application ( § 361 et seq. ) and National Phase Entry ( § 371 )
• Hague International Design Application ( § 381 et seq. )
• Reissue ( § 251 )

Continuing applications are merely special types of nonprovisional applications that claim priority to a prior co-pending domestic U.S. nonprovisional application (or PCT application designating the U.S.). What is called a “divisional” application in many other countries might be called either a “continuation” or “divisional” application in the USA. PCT applications designating the U.S. are treated like domestic U.S. nonprovisional applications for substantive matters, though they there are some procedural differences in how PCT international applications and national phase entries are handled and examined. Though in the strict sense a PCT national phase entry is not separate from the PCT international application but merely represents a different (national) phase in the life of the same international application.

U.S. provisional patent applications do not permit priority claims, but all other types of U.S. patent applications can potentially include one or more domestic or foreign priority claim(s) .

There are no annuity payments required for pending U.S. patent applications in the manner required in many other countries. Official fees associated with patenting in the U.S. generally involve initial filing fees, then an issue fee following allowance, and then periodic maintenance fees to keep a granted patent in force, plus various other official fees that may apply in particular situations. But it is not required to submit official “annuity” payments on a yearly basis to keep a pending U.S. application active. Maintenance fees must be periodically paid to keep a granted U.S. patent in force, but only after a patent is issued.

A U.S. patent application can name an applicant (or multiple applicants) other than the inventor(s), but only under certain circumstances where the applicant has a suitable entitlement to the invention and application. (35 U.S.C. §§ 117 and 118 ). It is necessary to affirmatively indicate a basis for any non-inventor applicant’s entitlement to file a U.S. patent application at the time of filing. The same basic requirements for entitlement apply to applicants for PCT international applications designating the USA.

The general rule in the USA is that an invention is initially owned by the inventor(s). Usually, a non-inventor entity—such as an employer—will have rights to (and be entitled to file a patent application on) an invention only if that invention has been assigned , there is an obligation to assign—through a duly signed written contract or operation of applicable local law (of a U.S. state or foreign country)—or if there is a non-assignment transfer of ownership rights by operation of applicable local law (of a U.S. state or foreign country). Transfers of ownership rights by operation of law might occur either through laws governing employee inventions (such as “service inventions”) or governing spousal co-ownership rights (such as in “community property” states). If an inventor is deceased or incapacitated, an estate or other similar entity can be the applicant. There is also the possibility for an entity with a “sufficient proprietary interest” to be a patent applicant, but that option will rarely apply and a number of unique procedural burdens must be satisfied (including a petition with supporting evidence and an extra fee payment).

On an Application Data Sheet ( ADS ) submitted with a new U.S. patent application, one (and only one) of the following options must be selected to identify each named applicant’s entitlement to the invention and application:

While some other countries do not scrutinize entitlement if a priority application or PCT international application names the same applicant, U.S. practice differs. This is partly because non-inventor applicants have only recently been permitted under U.S. patent law and there is still not complete international harmonization on this point. The need to affirmatively indicate the entitlement of a non-inventor applicant to file any new U.S. application or national phase entry generally means that any assignment or contractual obligation to assign must already be in place at the time of filing. Most importantly, there is a need to understand which of the possible options entitles a non-inventor entity to be an applicant for a given patent application. USPTO procedures are not particularly convenient or robust on this point, which can create confusion as to how widely-varying local laws governing invention ownership in any given inventor’s jurisdiction correspond to the options that the USPTO allows applicants to select to indicate entitlement. If this cannot be determined or completed at the time of filing, then filing in the name of the inventor(s) as applicant(s) is possible and the name of the applicant can potentially be changed later to that of a non-inventor.

Official fees for U.S. patent applications vary depending on whether the applicant(s) each qualify for a reduced fee status or not. Therefore, in order to calculate applicable official filing fees the entity size of each applicant must first be determined .

There are three possible entity sizes with different official fee rates:

• Large Entity (Undiscounted)
• Small Entity
• Micro Entity

Large entity rates are the baseline or default fees that normally apply. Large entity fees are also referred to as undiscounted fees. Small and micro entity statuses allow for discounts on most official fees. Small entity fees are generally forty percent (40%) of large entity fees, and micro entity fees are generally half (50%) of small entity fees or twenty percent (20%) of large entity fees. Certain qualifications and, for micro entity status, certifications must be made in order to initially establish discounted fee status. Discounted small or micro entity status can also be lost over time, and such a loss of a discounted fee status generally requires submitting a formal notification. Fraudulent assertions of entitlement to discounted official fees will render a patent unenforceable , so it is important to accurately establish fee status and update it as circumstances change.

Large Entities

Undiscounted or large entity status applies whenever any applicant does not qualify for reduced fees as a small or micro entity. A for-profit business having more than 500 employees is a large entity. Also, an applicant is required to pay undiscounted (large entity) fees if associated with a large entity, such as through an affiliation , obligation to assign, licensing agreement, joint ownership, or shop rights . 

Small Entities

To qualify for  small entity  status, the applicant(s) must each be a person,  small business concern  (having no more than 500  employees ), or nonprofit organization (including non-profit universities and certain nonprofit scientific or educational organizations).  But an applicant is required to pay undiscounted (large entity) fees if associated with an entity that does not qualify as a small entity, such as through an affiliation, obligation to assign, licensing agreement, joint ownership, or shop rights .  In general, entities are affiliates  when one has the power to control the other or a third party has power to control both.

A security interest—using a patent application or granted patent as collateral for a loan or other form of credit—does not result in loss of small entity status unless there is a default that triggers the security interest such that a transfer of an ownership interest occurs. An inventor or applicant retaining a firm to build a prototype of an invention for the applicant’s own use is not considered to constitute a license for purposes of the small entity definition. Also, a license to a U.S. Federal agency does not result in loss of small entity status.

Small entity status can be established at the time of initial filing and continues through original examination. If small entity status is lost, a notification of the loss of entitlement to small entity fees must be filed but only as of the time of issue fee payment (the notification need not be filed earlier , during ongoing examination).

Any attempt to intentionally establish inaccurate status as a small entity, or pay fees as a small entity, is considered fraud on the USPTO. Such fraud can make a resultant patent unenforceable . Also, the USPTO can assess a fine—even after a patent has issued—of no less than three (3) times the amount that was unpaid due to a false certification of small entity status.

Micro Entities

There are two possible bases for micro entity status: gross income basis and institution of higher education basis. The requirements for each are rather complicated, and are each discussed in further detail below. Micro entity compliance requirements are also more burdensome than for small entity status. Because the USPTO funds its operations through collection of official fees, it has set up procedural obstacles around the highly discounted micro entity fees that might make establishing micro entity status unattractive even if the applicant would qualify for it.

Both possibilities for micro entity status require that the applicant(s) qualify as a small entity. Small entity status might be unavailable if there is a license granted in the invention to a large entity, for example.

Micro entity status can be lost during ongoing examination. All applicants must still be entitled to micro entity status to pay a fee in the micro entity amount at the time of any official fee payments. So, after initially establishing micro entity status though certification, it is further necessary to determine whether each applicant qualifies for micro entity status at the time each fee payment is made. That requirement makes ongoing compliance more burdensome than for small entity status. It is required to promptly file a notification of loss of entitlement to micro entity status when an applicant or inventor’s status changes.

Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, is considered fraud on the USPTO. Such fraud can make a resultant patent unenforceable . Also, the USPTO can assess a fine—even after a patent has issued—of no less than three (3) times the amount that was unpaid due to a false certification of micro entity status.

If in doubt, it may be best to assert only small entity status instead of micro entity status. This is due to the additional burdens to initially certify and establish micro entity status and the ongoing burdens requiring a renewed determination of qualification for micro entity status with each filing where a fee may be due, coupled with the harsh penalty of potential unenforceability for an improper assertion of micro entity status.

Micro Entity—Gross Income Basis

To qualify for micro entity status— gross income basis , the applicant(s) must each certify the following on a form :

(i) the applicant qualifies as a small entity; (ii) no applicant or inventor has been named as an inventor on more than four previously filed U.S. non-provisional patent applications (including PCT applications designating the U.S., but excluding certain applications as explained below); (iii) no applicant or inventor had a gross income in the previous year of more than the “Maximum Qualifying Gross Income,” which is three times the U.S. median household income (this amount changes yearly); and (iv) no applicant or inventor has assigned, granted, or conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest to another entity that does not meet the “Maximum Qualifying Gross Income” limit.  

But applications resulting from prior employment are not counted against the total. So an inventor (or applicant) is not considered to be named on a previously-filed application for micro entity status purposes if he or she has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of his or her previous employment. Also excluded from the total are any PCT applications for which the basic national phase entry fee to enter the U.S. was not paid.

Income in a foreign currency must be converted to U.S. dollars using Internal Revenue Service (IRS) exchange rates .   

Micro Entity—Institution of Higher Education Basis

To qualify for micro entity status— institution of higher education basis , the inventor(s)-applicant(s) must each qualify as a small entity and certify micro-entity status based on one of two possibilities. Each micro entity inventor-applicant (who qualifies as a small entity) must either:

(A) obtain the majority of their income from a United States institution of higher education ; or (B)  have assigned, granted, or conveyed, or be under an obligation by contract or law to assign, grant, or convey an ownership interest in the application to such a United States institution of higher education .

These qualifications must be certified on an appropriate form . Importantly, the institution of higher education basis for micro entity status also requires that the inventor(s) be named as the applicant(s), not the university .

The basic filing fees for a new U.S. application allows for up to twenty (20) total claims and up to three (3) independent claims. Additional total and/or independent claims, whenever presented, require payment of extra claim fees . Those extra claim fees vary depending on large/small/micro entity status of the applicant(s).

It is possible to reduce the number of claims through one or more preliminary amendment(s) (which are like voluntary amendments). There is no official fee to file such a preliminary amendment.

Be mindful of restriction practice (unity of invention), which arises when the USPTO examiner determines that the application directed to multiple distinct inventions. Paying for a large number of extra claims at initial filing may be wasteful if a restriction or election requirement (unity of invention rejection) is issued that necessitates removing some claims and potentially filing them in a separate (divisional) application. In some circumstances, it may be preferable to cancel some claims upon initial filing rather than pay extra claim fees where restriction seems likely. Keep in mind that a U.S. examiner can still issue a restriction requirement even if the priority application was found to have unity of invention by a different examining authority.

Multiple dependent claims are disfavored under U.S. practice. While technically available, there are prohibitive official fees for any multiple dependent claims. Additionally, regulations prohibit a multiple dependent claim from serving as a basis for any other multiple dependent claim. So it is necessary to remove any nested multiple claim dependencies. For all these reasons, it is recommended to remove any and all multiple claim dependencies at the time of U.S. filing. As an alternative, it may be preferable to present additional (new) dependent claims in place of a single multiple dependent claim with comparable overall scope, if so desired. Extra total claim fees might apply when adding additional dependent claims, but those official fees may be less than the prohibitive official multiple dependent claim fee.

It is preferable to make any and all claim reductions at the time of initial filing. However, it may be possible to do so after initial filing. For example, with PCT national phase entries in the USA it is possible to omit payment of extra claim fees upon initial national phase entry (even though extra claims are present in the application), which will result in the USPTO issuing a deficiencies notice that sets a two-month deadline to pay the extra claim fees or cancel claims to avoid those extra claim fees.

Application Size and Sequence Listings Fees

The USPTO has extra application size fees as well as fees for large DNA sequence listings. Lengthy applications or applications with sequence listings may require payment of these extra official fees.

An official application size fee applies for each 50 application pages over 133 electronic pages. The USPTO counts the pages of any preliminary amendment present on the filing date of the application, including multiple sets of drawings or multiple sets of a specification ( e.g. , clean and marked-up versions), in determining the application size fee required. The USPTO will not count the sheets of any English translation of a non-English specification if submitted with the application on filing. Large tables (other than a computer program or sequence listing) can be submitted as a separate ASCII text file for which each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee. Any sequence listing or computer program listing appendix in a compliant electronic medium (ASCII text for computer program listings or an XML for a sequence listing, as part of a separate associated file) is excluded when determining the application size fee, but is included for application size calculations if submitted as an integral part of the specification. But large sequence listings (300MB to 800MB, or over 800 MB) carry a separate additional fee in a two-tier fee structure.

For a national stage entry application, the application size is determined on the basis of the international application as published by WIPO. This is different than the way the number of pages is calculated for other types of U.S. applications.

As of January 17, 2024, an official surcharge is imposed for non- DOCX format patent application filings.  Payment of the surcharge allows applications to instead be filed only in PDF format, which was typical for many years prior to implementation of the surcharge. Drawings can still be in PDF format (although DOCX format drawings are accepted). It is only the application text that must be in DOCX format to avoid the official surcharge.

This non-DOCX surcharge applies to new utility patent applications, including so-called direct U.S. filings with a foreign priority claim under the Paris Convention. However, at least for now, the non-DOCX surcharge does not apply to PCT national phase entries into the USA, or to design, plant, or provisional patent applications. Also, the USPTO applies the non-DOCX surcharge to applications filed under 37 C.F.R. § 1.52(d)(1) in a language other than English (meaning a DOCX copy of the non-English original is required to avoid the non-DOCX surcharge). 

In general, the greatest concerns about DOCX format have to do with complex application content, which may not render as the applicant intended at the USPTO side. Experience to date has shown that USPTO-side conversion/rendering errors may arise for applications with:

• embedded mathematical equations created with a word processing program’s equation editing functionality
• embedded chemical formulas created with a word processing program’s formula editing functionality
• pseudo computer code with special indenting
• text in unusual characters or fonts
• anything created on a word processing program other than a version of Microsoft Word® intended for use in a Latin-character language (like English)

If mathematical equations or chemical formulas are present in the text, consider inserting images of those equations/formulas in the DOCX file rather than utilizing the equation/formula editing function of the word processing program in order to help minimize rendering/conversion errors. Though any such inserted images must be of a suitable size and resolution.

Additional DOCX submission difficulties also currently arise if any of the following are present:

• line numbering
• claim autonumbering using numbered list formatting
• use of proprietary word processor plug-ins that restrict changes to document formatting (for instance, machine translation plugins or patent application drafting plugins)
• drawings (figures) placed in the same DOCX file as the specification text (such as figures appearing at the end of the same file as the application text)

It has long been a challenge to edit application documents that were provided in “editable” format where different word processing programs, different versions of the same word processing program, or different word processor settings or plug-ins, are used. For instance, paragraph numbering is sometimes implemented in a way that makes it difficult to change that paragraph numbering when amendments are made at the time of filing in the USA. Such challenges may be even more prevalent with DOCX-format filings. Providing a suitable DOCX-format copy of the application will therefore be more important than before.

Metadata should ideally be deleted from DOCX files before filing. The USPTO claims that metadata is automatically removed upon filing. But affirmative removal of metadata prior to filing may still be beneficial to ensure that it is fully removed.

While the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants.  The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) within one year may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations. Paying the surcharge rather than having an attorney review the rendering of an extensive number of equations or formulas may simply be more cost-effective. The surcharge also applies to preliminary amendments filed with new original applications, which creates significant additional burdens and problems for applicants and their U.S. counsel. Though for applications containing only simple text, without complex or unusual formatting or embedded equations/formulas (other than equations inserted as images), DOCX-format filing should not pose any major problems. 

Further discussion of potential issues and best practices for DOCX formal filings is available here .

U.S. patent applications must be in the English language. Therefore, an English translation is required for any application that is not in the English language—although American English is not specifically required. With any translation of a new application, it is necessary to translate all text, including any text appearing in the drawings.

For PCT national phase entries into the U.S., an English translation of each of the following is required:

• the PCT international application as filed
• amendments, if any, to the claims under Article 19
• any annexes to the international preliminary examination report (IPRP), including Article 34 amendments, if a Chapter II demand was made

Filing of a required English translation after the 30-month national phase entry deadline carries a late filing official fee surcharge. Verification (that is, certification by the translator) of the English translation is normally not necessary for PCT national phase entries. Also, sequence listings (if any), generally do not require translation if in compliance with PCT Rules. The deadline to file a late translation will be set by a notice from the USPTO, and will be the later of two (2) months from the date of the notification or 32 months from the priority date.

For direct Paris Convention filings, the English translation can serve as the U.S. application and it is not required to submit the non-English version (other than to provide a certified copy of the foreign priority application). Submission of a non-English-language application is possible ( 37 C.F.R. § 1.52(d)(1) ), but doing so requires payment of an official surcharge and a translation with a statement that the translation is accurate—extra requirements that can be avoided entirely by submitting only the English translation as the U.S. application. However, the USPTO tries to discourage non-English application filings, and says they should be reserved for emergencies and not routinely used.

Also worth noting, an English-language translation of a non-English language foreign priority application (that is, of the certified copy of the priority document) is normally not required except in the following (uncommon) situations: (i) when the application is involved in an interference or derivation proceeding; (ii) when necessary to overcome the date of a reference relied upon by the examiner; or (iii) when specifically required by the examiner. If an English-language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

English translations of prior art references submitted to satisfy the duty of disclosure are also required. Machine translations of prior art references are usually acceptable, though if a human translation has been obtained that must be used instead.

Whenever a foreign priority claim is made in the U.S. patent application, submission of a certified copy of the foreign priority application is required . The deadline to submit the certified copy (for utility and plant patent applications) is sixteen (16) months from the priority date or four (4) months from U.S. filing, whichever is later. However, it is possible to submit a non-certified “interim copy” of the priority document within the applicable time period and then later submit the certified copy while the U.S. application is still pending. For design patent applications, the deadline for submission of the certified copy is by the payment of issue fee—there is no earlier deadline fixed before an allowance.

Procedurally, electronic transmission of certified priority documents is preferable. The USPTO can effectuate electronic retrieval of a certified copy via WIPO’s Digital Access Service ( DAS ) exchange for participating offices . This requires first registering the priority application with the WIPO DAS exchange and then providing a DAS access code with the U.S. application filing papers. Though for U.S. design patent applications, submission of a hard copy certified priority document is still common.

For PCT applications entering the U.S., prior PCT Rule 17 submission of a certified priority document avoids need to separately submit a certified copy in the national phase.

Additionally, in any later-filed application (that is, continuation, CIP, divisional, or reissue application) claiming priority to the same foreign application, it is not necessary to re-submit another certified copy. The prior submission of a certified copy in the U.S. parent application is sufficient.

One requirement for U.S. patent applications that differs from practice in other countries is that a signed oath/declaration of inventorship from each inventor is required. The terms “oath” and “declaration” are used somewhat interchangeably here, though there are other types of (optional) declarations possible other than declarations of inventorship. In any event, obtaining inventor signatures on declarations of inventorship is one area were delays can arise, particularly when inventors are difficult to locate or are uncooperative.

An inventor declaration containing certain specific language is a requirement for any U.S. patent to issue. In that sense, obtaining executed declaration(s) of inventorship is crucial. It is not necessary to file inventor declaration(s) at the time a new U.S. application or national phase entry is filed. However, if any or all inventor declaration(s) are missing, their late filing carries an official fee surcharge.

For PCT national phase entry applications, there is a somewhat unusual potential declaration filing deadline. Submission of all declarations of inventorship are required before a request for continued examination (RCE) can be filed in a PCT national phase entry. The term “zombie” applications is sometimes used to describe non-compliant applications, because a PCT national phase entry application is abandoned if an RCE is filed without all declarations. However, this declaration deadline applies exclusively to PCT national phase entry applications and it does not apply to RCEs in Paris Convention (direct) filings or PCT “bypass” applications (such as those filed as continuations or divisionals of the PCT international application). If obtaining inventor declarations is likely to be difficult, filing a PCT “bypass” application rather than a true national phase entry may be desirable.

Each declaration must: identify the inventor or joint inventor executing it by his or her legal name; identify the application to which it is directed; include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and state that the application was made or was authorized to be made by the person executing the oath or declaration. An identification of all inventors (that is, an identification of the complete inventive entity) and inventor mailing addresses are also required but are usually included on a separate application data sheet ( ADS ) form. In addition, an inventor’s residence city and country must also be identified on the declaration or ADS form if that inventor lives at a location which is different from the specified address where the inventor customarily receives mail.

The USPTO provides an inventor declaration form , which is also available in a variety of dual-language versions . These forms have space to list the title of the application and have checkboxes to either indicate that it corresponds to an attached copy of an application provided to the inventor (this option always applies for declarations signed before an application is filed) or to a prior U.S. or PCT international application identified by serial number and filing date. Though it is not required to use the USPTO-supplied inventor declaration form. Sometimes custom forms are utilized, which may combine a declaration, assignment, and/or power of attorney.

It is possible for inventors to sign declaration before PCT international or national phase filing, or during the international phase (prior to national phase entry). See PCT Rule 4.17(iv) and Rule 51bis.1(a)(iv) ; and PCT RO Guideline 192A . This can involve obtaining electronic signature(s) from the inventor(s) on the PCT request when prepared utilizing ePCT , or by obtaining signatures from the inventor(s) in Box No. VIII(iv) of the paper version PCT request form ( PCT/RO/101 ). It is also possible to create an inventor declaration form utilizing the exact text from PCT Administrative Instructions Section 214(a) or by completing the USPTO’s declaration form using the PCT application details.

Signed inventor declarations that meet all requires can generally be re-submitted for subsequent U.S. continuation and divisional filings. This helpfully avoids having to obtain newly signed inventor declarations all over again in continuing cases. CIP applications that add new matter may or may not require new oaths/declarations—if any new inventor(s) are added they will each need to execute an oath/declaration.

The requirements for a inventor’s signature on the oath/declaration to be acceptable (including electronic/digital signature requirements) are discussed below .

Assignments

An assignment is generally required in order to name the applicant as an entity other than the inventor(s)—although a valid and legally binding obligation for the inventor(s) to assign the application is minimally sufficient even if the assignment has not yet been signed. Also, an executed assignment will be required in order for a non-inventor applicant-patentee to later enforce any resulting patent. By law , an assignment of an interest in a U.S. patent must be in writing.

It is customary for U.S. assignments to be signed only by the assignor. The assignee does not need to also sign the assignment for it to be valid—unlike in certain other countries. This is typically a different between jurisdictions that follow a common law approach versus a civil law approach. An assignee could optionally sign the assignment, however, which might help allow a single assignment document to be used across multiple jurisdictions.

Notarization (or apostille) is not required on a U.S. patent assignment. But optional witness signatures or notarization still have benefits. In particular, such notarization or witness signatures help reduce the possibility that an inventor or other party will later dispute the authenticity of an inventor signature.

If there are multiple assignees/applicants, U.S. law says that each joint owner can assign (or license) their interest in entire application/patent without accounting to the other joint owners. But all co-owners of a patent must join any infringement lawsuit.

Assignment terms are subject to state or foreign law. While some aspects of U.S. federal law govern patent assignments, such as the requirement that they be in writing and the requirements for recordability , other aspects are instead considered matters of contract law that are governed by the relevant state or foreign jurisdiction’s law. There may be choice of law issues that govern such questions. But, generally, the jurisdiction where the assignment was entered into and/or the jurisdiction where the invention was made will be relevant considerations in determining applicable law. When recording an assignment document, the USPTO does not make any determination of the validity of the document or the effect that document has on the title to a patent application or patent ( 37 C.F.R. § 3.54 ).

Sometimes U.S. state or foreign law effectuates a transfer of rights in an invention to employer by operation of law, or to an inventor’s spouse. Also, inheritance laws may effectuate a transfer of patent rights to an heir or estate of a deceased inventor. In such cases, it is possible to execute and record a “confirmatory” and/or “quitclaim” assignment that provides a recordable document that by its terms merely confirms the transfer that was previously effectuated by operation of law.

Assignor estoppel is a concept that may apply to a patent assignment to prevent the assignor from later challenging the validity of the assigned patent application. Though this concept is potentially most significant for assignments executed after initial filing of an application, particularly for assignments of granted patents.

The requirements for an assignor’s signature to be acceptable (including electronic/digital signature requirements) are discussed below .

Assignments should be recorded with the USPTO. Doing to can make the bona fide purchaser defense available if there is a later conflicting assignment. Recordation requires at least the names of all inventors and either the application serial number (identification of the application serial number of the foreign priority application or PCT application is sufficient) or the title of the invention (if the application serial number is not yet known) in the assignment document. It is common, and recommended, for assignments to include an express authorization for the serial number to be inserted after signing once ascertained, to facilitate recordation. Keep in mind, however, that the USPTO does not substantively assess the terms of recorded assignments but merely performs a non-substantive review to ensure that a submitted document meets the minimum requirements for recordability.

An English translation signed by the translator is required for recordation of a non-English assignment document. This is not specifically a certification requirement.

An assignment identifying a PCT international application can be recorded against the U.S. national phase entry. It is not necessary to specifically identify the U.S. national phase entry application serial number if the PCT international application serial number is provided.

Recordation of a patent assignment is not required by the USPTO. But, U.S. law provides a potential subsequent purchaser defense that makes timely recordation desirable:

“An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” 35 U.S.C. § 261

In other words, if an assignment is not recorded and the assignor-inventor later executes a conflicting assignment to another entity, then the original assignment is void against the subsequent assignee and the original assignee’s remedy would be against the inventor-assignor for damages.

Obligations to assign such as employment agreements, master services agreements, or the like obligating assignment can sometimes be recorded (for instance, if an inventor is unavailable or uncooperative) but usually are not. But such other types of documents that include an assignment may lack the required identifying information to be recordable. That is, while they may legally assign ownership, they still may not be recordable, because USPTO assignment recordation standards are distinct from the legal requirements to transfer ownership of an invention.

If an assignment is just one part of a larger agreement, it may not be desirable to record the entire agreement, which would become publicly accessible. In such situations, execution of a separate confirmatory assignment for recordation may be preferable. Alternatively, if there is only a limited amount of information that is sought to be kept confidential, a redacted assignment could be recorded. For example, it is possible to redact the purchase price from the version of the assignment sought to be recorded. U.S. patent assignments are not required to show the purchase price, as is required in some other countries.

Licenses and security interests can be recorded at USPTO like assignments. But it is not required to record licenses or security interests. Recordation of patent licenses is not common.

Mergers and changes of name can also be recorded. That is, if the applicant (or patentee) changes its corporate name, or merges with another company, such changes can be recorded at the USPTO. It is recommended to do so, in order to have an accurate record of the current owner and to avoid questions about ownership if a patent is ever later enforced.

Additionally, an assignment of a parent application can be recorded against any later divisional or continuation application(s). However, CIP application(s) that add new subject matter require an assignment of the new matter in addition to the previously-assigned matter.

If an assignment has already been executed but is defective or unrecordable, there are two main ways to address such problems:

• Mark-up changes (on the defective or unrecordable assignment) by lining out text to be deleted and writing in text to be added, and have each signatory (or at least each assignor) initial (or fully sign) and date each of those changes; or
• Have all of the signatories execute a new corrective or confirmatory ( nunc pro tunc ) assignment.

But only one or the other approach is necessary, not both. Moreover, the effective date of a new corrective assignment may be important. In some situations it is best to explicitly identify a retroactive ( nunc pro tunc ) effective date on the corrective or confirmatory document to be newly signed.

These sorts of changes or corrections are most common when an assignment exists but lacks the information needed to be recordable or when there is a typographical error. For instance, an assignment executed before an invention was conceived may be valid and effective to transfer ownership but it would not be recordable at the USPTO because it does not identify the title or application number associated with the application against which the assignment is sought to be recorded.

The USPTO requires that juristic entity applicants (that is, corporate or organization applicants) be represented by a USPTO-registered patent attorney (or agent). It is possible for U.S. patent counsel (acting in a “representative capacity” ) to file new applications and take many actions without a signed power of attorney ( POA ). But there are a certain number of actions that the USPTO only permits counsel to take if an executed POA from the applicant(s) is submitted. Therefore, it is customary and desirable for U.S. counsel to obtain a signed POA from each applicant (or inventor).

A POA need not be in any particular format so long as it is a written document that authorizes one or more patent practitioners or joint inventors to act on the applicant’s (or patent owner’s) behalf. It is possible for a POA to be combined with another signature document, such as in a combined declaration and POA. The USPTO also provides a general POA form (available in dual language versions ) that can be signed prior to an application being filed, which is then submitted with a transmittal form signed by U.S. patent counsel to identify the particular application for which the general POA is being submitted. Use of a general POA is beneficial because it can be re-used for later applications and because it avoids the need to wait until the application is filed to insert the application serial number before being signed (which then requires a later POA filing separate from the application filing). A person signing a POA on behalf of a corporation should identify his or her corporate title.

POAs can identify a group of practitioners by a “Customer Number” that a firm maintains with the USPTO. The USPTO uses the Customer Number to identify the specific set of USPTO-licensed practitioners and their correspondence address for official communications. When a general POA form is used that identifies a Customer Number (and will be accompanied by a transmittal signed by U.S. counsel), the application number, filing date, and firm information fields on the POA form should be left blank (completing those other sections would conflict with the use of the USPTO Customer Number and might lead to official communications not being sent to U.S. counsel).

Signature Requirements

Patent-related documents requiring a signature must be personally signed by the named individual or by a person having authority to sign on behalf of a corporate entity (also called a juristic entity). While “wet” or “ink” signatures are always acceptable, the acceptability of electronic or digital signatures on patent-related documents, and the format of such signatures, varies depending on the type of document and potentially also local law. These and other issues related to signatures on patent-related documents are addressed below.

Generally, any patent-related document requiring a signature must include, at a minimum, both a signature and also indicate the name of the person or entity signing in typed or printed (non-script) lettering. It is customary—and in some instances required—for the signature to appear immediately above the typed or printed name. It is important that the typed or printed name be the signatory’s legal name, including his or her first name and last name (surname). Use of the signatory’s middle name or middle initial is not required but should be included if the signatory has a common name or customarily includes such information when signing documents. A date when the document was signed is typically added—and it is recommended to do so—but a date may not be strictly required.

When a document is signed on behalf of a corporate entity, then the signature block should include the name of the corporate entity as well as the name of an individual signing on behalf of that corporate entity and his or her corporate title. The preferred format for indication of a corporate title is “Title, Company Name”. In some instances further steps or additional terms/affirmations may be required to establish that the person signing on behalf of a corporation has authority to do so, as addressed below. Just as with an individual signing in a personal capacity, the date when the document was signed on behalf of a corporation is typically added but may not be strictly required.

With respect to individuals, the named individual must personally sign the document in question. Patent-related documents usually cannot be signed on behalf of (or “for”) the named individual or by the named individual’s agent. This is a matter of who is named as the individual signing the document. In some cases, an attorney or other person acting on behalf of an individual may have authority to sign a document but that attorney/agent must be identified as the signatory. Moreover, there are special provisions governing who can sign relevant documents when an inventor is deceased or legally incapacitated, and what can be done when an inventor cannot be found or reached or has refused to sign an oath/declaration.

For persons signing on behalf of a corporation, organization, or other juristic entity, he or she must have authority to bind the corporation with regard to the document(s) in question. In general, any person can be authorized (empowered) to act on behalf of a corporation. But that authority must be sufficiently established to be recognized by the USPTO. Sometimes, providing the signing person’s corporate title is sufficient on its face to establish authority to sign. Other times, additional confirmation of authority to sign may be required.

Normally an officer (President, Vice-President, [corporate] Secretary, Treasurer, or Chief Executive Officer [CEO]) of a corporation should sign necessary patent-related documents on behalf of that corporate entity. But different types of corporate entities, such as limited liability corporations (LLCs), may have a Managing Member or other titles for persons with controlling authority rather than traditional U.S. corporate officer titles. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director. Modifications of basic corporate titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent of an officer. Therefore an exception is made for the USPTO to presume that people with such titles have authority to sign on behalf of a foreign juristic entity (foreign corporation).

The USPTO views certain titles as generally inadequate to establish signing authority for a corporate entity on their own. For example, titles such as “Manager of Patents,” suggesting narrowly limited duties, are not acceptable to establish signing authority without more. Moreover, titles such as “administrator” or “general counsel” do not clearly set forth that person as an officer of the corporation and such titles are inadequate to establish authority to sign without more. If these titles apply to the person signing, something more is generally required to establish signing authority.

When the authorized signing person does not have a traditional officer title, it is possible to include a separate indication of authority to act on behalf of the corporation in an explicit statement of authority contained in the document being signed. For example, the statement, “The undersigned (whose title is supplied below) is empowered to act on behalf of the applicant” or “The undersigned (whose title is supplied below) is empowered to sign this [document title] on behalf of the applicant” would normally be sufficient to establish signing authority if added to the document somewhere above the signature block. Of course, such a statement must be accurate. Alternatively, a submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of a corporation, if a copy of the resolution is, or was previously, submitted—but this alternative approach is uncommon.

Form of Signature: Acceptability of Electronic/Digital Signatures and Seals

Signatures can usually take any form (such as making a mark like an “X” when the signatory is illiterate) but are customarily the signatory’s name in script (cursive) when signed by hand as a “handwritten”, “wet”, or “ink” signature on a hard copy. The USPTO accepts certain types of electronic signatures on correspondence documents related to patent prosecution (see below); however, assignment signatures are not governed by USPTO regulations but rather by general contract law and therefore are potentially subject to differing state or foreign laws. Acceptable and unacceptable uses of electronic/digital signatures are taken up below. But note that “wet” or “ink” signatures on a hard copy are always an acceptable form of signature in any context. Moreover, the USPTO accepts electronic scans of signed documents and does not require the original signed hard copy. Though signed originals should be retained by the applicant for safekeeping as evidence of proper execution in the event that questions later arise as to the authenticity of a signature.

The use of seals instead of signatures is not recognized under U.S. law. Generally, a signature is required and a seal or stamp (alone) is not an acceptable substitute for a signature on USPTO documents. While a seal might be acceptable on an assignment signed abroad, if local law permits such use, it is recommended to obtain a signature in addition to or instead of a seal for any assignment of a U.S. patent or patent application to avoid potential disputes over sufficiency and choice of law.

Electronic S-Signatures Acceptable on Inventor Oaths/Declarations and Powers of Attorney

The USPTO permits electronic signatures inserted personally for USPTO correspondence, including inventor declarations/oaths and powers of attorney (POAs). Other application papers typically signed by a USPTO-registered patent attorney or agent can also be signed under USPTO e-signature regulations . When filing a new U.S. patent application, the oath(s)/declaration(s) of inventorship and POA are typically the only inventor- or applicant-signed documents for which USPTO e-signature guidelines will apply. Note here that USPTO e-signature regulations and policies are NOT controlling for the validity of signatures on assignments .

Acceptable e-signatures under USPTO regulations and guidelines take three forms. The first option is referred to as a virgule style “s-signature”, which takes the form:   /First Last/. Importantly, the s-signature must be inserted personally by the named signatory (and not by an assistant, agent, or anyone else other than the named signatory), must have both leading and trailing forward slashes as shown in the preceding example, and the signer’s typed name must appear immediately below or adjacent to the s-signature. Having the slashes pre-filled before signing is acceptable. The USPTO rejects improper s-signatures that lack the required leading and trailing slashes or include non-alphanumeric characters like graphical symbols (for example, emoji icons) or question marks. S-signatures can be inserted using a commercial e-signature computer system but when such a signature is typed on a keyboard by the signatory it must still comply with all requirements including use of leading and trailing slashes. That is, use of a commercial e-signature system does not avoid the requirement to use slashes. Examples of acceptable and unacceptable USPTO s-signatures are shown here: https://www.uspto.gov/sites/default/files/documents/sigexamples_alt_text.pdf

The second option accepted for electronically signing USPTO correspondence is an inserted graphic representation of a pen-and-ink signature. A legible electronic image of a handwritten signature inserted, or copied and pasted, by the person signing is acceptable as an inserted graphic representation of a pen-and-ink signature. A graphic representation of a handwritten signature may also be created through a computer using a stylus pen and/or touch-pad (but not using a keyboard).

The third option is to use an acceptable document-signing software tool (DocuSign®, etc.). This option became available on March 22, 2024. In order for this type of signature to be acceptable, two requirements must be met: (i) the software tool must be specifically designed to generate an electronic signature and preserve signature data for later inspection in the form of a digital certificate, token, or audit trail; and (ii) the software tool must result in the signature page or electronic submission form bearing an indication that the page or form was generated or electronically signed using document-signing software. If those requirements are met, it is not necessary for this type of electronic signature to include slashes. Common commercial e-signature tools using will be able to satisfy these requirements, and typically will do so automatically under normal usage and settings.

As already noted, USPTO e-signature regulations are not controlling for the validity of assignments because such aspects of assignment signatures are treated as a matter of general contract law rather than U.S. federal patent law. Instead, state or foreign law governs many important aspects and terms of assignment contracts, which would normally encompass the validity of signatures (or seals) and the like. Moreover, if the jurisdiction where the signatory is located requires both parties to the assignment to sign, it is possible those requirements would apply even to an assignment of U.S. patent rights.

“Wet” handwritten pen-and-ink signatures are still standard for assignments. But questions frequently arise about when and how electronic signatures might be used for assignments of U.S. patent rights. In brief, electronic signatures may be valid but the requirements for validity vary and these requirements generally require the use of a commercial/proprietary e-signature system that allows all legal requirements to be satisfied. In other words, while electronic signatures might be convenient, their use often requires a commercial e-signature platform (that provides suitable record retention) in order to be legally valid. If such a commercial e-signature system is not available, a “wet” handwritten pen-and-ink signature should be used. Also, any assignment affecting patent rights in multiple countries may be subject to different legal interpretations and requirements in those different jurisdictions, which may suggest using “wet” handwritten signatures to promote more universal validity.

For assignments executed in the USA, there are four general requirements under various state and federal electronic/digital signature laws ( ESIGN & UETA ):

• Intent to sign
• Consent to do business electronically
• Association of the signature with the record: the system used to capture the transaction must keep an associated record reflecting the process by which the signature was created, or generate a textual or graphic statement (added to the signed record) proving it was executed with an electronic signature
• Record retention

But the U.S. states of Illinois ( 5 ILCS 175 ) and New York ( N.Y. State. Tech § 301 et seq. ) have not adopted the uniform law (UETA) applicable in other states. States are also able to modify the uniform law, so it is important to verify the law of the particular state in question if there are any questions about e-signature validity on an assignment.

The U.S. federal ESIGN Act is not limited to persons located in USA, though it is limited to transactions in or affecting interstate or foreign commerce (which may or may not be implicated by a patent assignment). Still consider local law regarding electronic signatures for patent assignments for any assignor outside the USA. Choice of law, conflict of law, and/or preemption issues may arise for electronic signatures when there are multiple assignors in multiple states and/or countries. If these concerns are present, it may be possible to include a choice of law term in the assignment itself in order to affirmatively select the e-signature law of a particular jurisdiction. Though not all foreign jurisdictions honor choice of law provisions.

Laws about electronic/digital signatures in other countries vary but there is growing support for use of e-signatures. For instance, in the European Union, eIDAS (electronic IDentification, Authentication and trust Services) regulates qualified electronic signatures that may apply to assignments executed in the EU affecting U.S. patent rights (although the EPO does not accept any electronic signatures on assignments affecting EP patent rights; a 2021 decision to accept them was overturned by the EPO Boards of Appeal in late 2023).

Use of a “wet” (handwritten pen-and-ink) signature on a later corrective or confirmatory assignment may cure an insufficiency or defect with an earlier electronic signature. But an electronic signature defect must likely be cured before starting an enforcement lawsuit to have standing.

Consider e-signature enforceability for the right of priority too, particularly where it is desired for an assignment to implicate patent rights across multiple jurisdictions. The U.S. generally treats the right of priority as present if the named applicant is entitled to file and the objective requirements for a priority claim are met (largely based on timing and the named inventive entities of the respective applications), without requiring a specific assignment of the right of priority. This differs from jurisdictions that require an explicit assignment or transfer of the right of priority.

Under applicable U.S. regulations and procedures , each individual associated with the filing and prosecution of a patent application has an ongoing duty of candor and good faith in dealing with the USPTO, which includes a duty to disclose to the USPTO all information known to that individual to be material to patentability. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the USPTO or was submitted to the USPTO in a prescribed manner (that is, in an Information Disclosure Statement or IDS ). However, no patent will be granted on an application in connection with which fraud on the USPTO was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. “Inequitable conduct” during prosecution of a patent application can render a resultant patent unenforceable.

Individuals having a duty of disclosure include (1) each inventor named in the application, (2) each attorney or agent who prepares or prosecutes the application, and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee, or with anyone to whom there is an obligation to assign the application. The duty extends to persons whose involvement relates to the content of an application or decisions related thereto. But the duty does not extend to personnel who merely assist with an application in an administrative or secretarial manner, such as typists, clerks, and the like. Moreover, the USPTO says that the duty of disclosure applies only to individuals, not to juristic entities as a whole. For instance, the duty of disclosure would not apply to a corporation or institution as such though it would apply to individuals within the corporation or institution who were substantively involved in the preparation or prosecution of an application.

The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claims.

All material prior art known at the time a U.S. application is filed should be submitted to the USPTO on an IDS at the time the application is filed, or within three months after original filing. Prior art can potentially include the inventor’s own prior commercial sales activities and/or public uses, as well as the inventor’s own prior patents, patent applications, and printed publications (such as journal articles, web site posts, and the like). Copies of non-patent literature (with translations if not in the English language) are necessary for proper submission with an IDS. However, copies of published U.S. patent documents are not required and copies of published foreign patent documents can usually be retrieved by U.S. counsel. Machine translations into English are acceptable, but if a manual (human) translation already exists that translation must be provided for submission.

Citation of a reference on an IDS is not taken as an admission that it qualifies as prior art or that it is material to patentability.

If a reference is lengthy but only a portion is relevant, it is possible to cite and submit a copy of only the relevant portion. Partial citation may reduce translation burdens in some situations.

Supplemental IDSs can and must be filed later on if new or additional prior art becomes known. In general, this means that foreign counterpart office actions and/or search reports should be reported promptly. There are patent term adjustment consequences to IDS filing delays after thirty (30) days and there may be official fee consequences after three (3) months. Prompt disclosure of any material prior art is therefore important in order to satisfy the ongoing duty of disclosure while also avoiding potential additional fees or losses of patent term adjustment.

A U.S. patent is barred if the invention was “made” in the USA, in whole or part, and then filed abroad without a foreign filing license ( 35 U.S.C. § 185 ). Generally, foreign filing license decisions must be made by and through the USPTO. However, if an application is first filed in the USA (including a PCT international application filed with the USPTO as receiving office [RO/US]) the foreign filing license requirement is deemed automatically satisfied by default after six (6) months in the absence of a secrecy order. In other words, once an application is filed with the USPTO, foreign filing is automatically permitted after six (6) months even if there was no affirmative grant of a foreign filing license by the USPTO. It is possible for an applicant to affirmatively request an expedited foreign filing license before filing outside the USA—this takes about three (3) days if requested by fax. Moreover, it is possible petition for a retroactive foreign filing license if sufficient cause is shown for the prior failure to obtain one. In general, if any inventive activity took place in the USA it is important to consider U.S. foreign filing license requirements before filing a patent application in another country.

When a foreign filing license was obtained in a prior application but the new application contains additional or modified disclosure, care must be taken to verify whether a new foreign filing license is required for the additional or modified disclosure. A new foreign filing license is not required if the modifications, amendments, and supplements do not change the general nature of the invention (in a way that may be detrimental to national security secrecy, in the opinion of U.S. government officials). Be aware, however, that so-called “dual use” export controls may mean that things capable of (or intended for) civilian use may still be deemed to implicate U.S. national security interests.

Other countries have various similar foreign filing license or first filing requirements , usually centered around national security requirements. Such other countries’ law typically have no direct effect on patentability in the USA. Though violations of such other countries’ laws may have consequences for the inventor(s) and/or applicant(s). When there are multiple co-inventors in different countries who collaborate to invent something, care should be taken to ascertain if foreign filing license or first-filing laws in multiple countries might apply.

There are two options to speed up examination of a new U.S. utility (or plant) patent application: accelerated examination and prioritized examination. These options are discussed in turn.

Accelerated examination can be achieved filing a petition to make an application “special” that is then granted. “Special” status does not guarantee examination along a particular timeline but it does move a given application up in priority in the examination queue of the assigned examiner (along with certain other types of applications treated as special automatically). The degree of priority given to an application made special may not be definite or precise, but such applications are in fact examined somewhat more quickly.

There are a number of different categories that may qualify a given application for accelerated examination—as well as occasional “pilot” programs for additional categories on limited bases. Established categories carry no official fee while non-enumerated ones of a miscellaneous nature (such as because infringement is occurring) require payment of an official fee. However, there are burdensome requirements for any request other than for the applicant’s health or age or under the Patent Prosecution Highway (PPH) program.

Enumerated (free) categories for accelerated examination with no official fee:

• Patent Prosecution Highway ( PPH )
• Age of inventor (at least one inventor is age 65 or older)
• Health of inventor
• Environmental quality (the restoration or maintenance of the basic life-sustaining natural elements, i.e. , air, water, and soil)
• Energy (the discovery or development of energy resources, or the more efficient utilization and conservation of energy resources)
• Countering terrorism

These enumerated accelerated examination categories will not apply to all applications. Also, some categories are more worthwhile than others in terms of how the USPTO processes them. And special status for accelerated examination can impose limitations on the applicant, such as limits on adding certain new claims during examination.

The PPH program is helpful and it is relatively easy to request participation for qualifying applications, although the program does have some compliance requirements . The basic requirement to qualify for the PPH program is for all of the claims in the application to sufficiently correspond to the patentable/allowable claims in a counterpart application for which the work product (IPRP, WO/ISA, WO/IPEA, EESR, or the like) of a participating office of earlier examination indicating patentability/allowability is provided. Statistically, PPH applications tend to have a somewhat higher overall allowance rate and first action allowance rate than for all U.S. applications collectively. Though it should be emphasized that acceptance in the PPH program does not guarantee allowance. The USPTO makes an independent determination of patentability and is not bound by any prior patentability decision by an office of earlier examination.

“Special” status based on the age or health of an inventor can be worthwhile if applicable. The USPTO processes such requests on an automated basis. This means that when an inventor qualifies, special status is granted to the associated application automatically after a electronic petition ( ePetition ) is filed. But a request based on the health of the inventor will make associated disclosure of medical information public unless special additional steps are taken.

The other accelerated examination categories for environmental quality, energy, and countering terrorism, however, have traditionally not been worthwhile to pursue. Such requests undergo a substantive review before being granted. And the USPTO has often rejected such requests on unconvincing grounds. Long ago, patent attorneys would even joke that such a request was more likely to slow down examination than to speed it up.

Prioritized examination, also called Track One examination, is another avenue to speed up examination that is potentially available for nearly any new application. It does involve satisfying a number of specific requirements, however. First, it carries an expensive official fee . Also, it is necessary to obtain and file all signature papers with the original application filing. There is a yearly limit on the total number of applications accepted into the program by the USPTO (see statistics on recent Track One filings here ). Moreover, Track One prioritized examination is not available for PCT national phase entries, though a “bypass” application can be filed instead of a true national phase entry to make Track One prioritized examination available. In general, Track One prioritized examination can greatly speed up the complete examination timeline (to allowance or abandonment) from being a year or more to being a matter of months. Prioritized examination is generally faster than accelerated examination. However, there are substantial costs and burdens associated with the prioritized examination (Track One) program.

For design patent applications, include Hague extensions, there are two options to speed up examination: expedited examination and accelerated examination. Expedited examination is available only for designs, and requires having acceptable design drawings, payment of an official fee , and also that the applicant conduct a pre-examination search. Accelerated examination is the same for design applications as for utility and plant applications, the details of which are described above. Prioritized examination (Track One) is not available for design applications.

It is possible to make an (early) express request for the PCT national stage to commence in the USA at any time prior to the 30-month deadline. However, the submission of an English translation of the PCT international application and inventor oaths/declarations are required for the U.S. national phase substantive examination to begin early (as well as submission of copies of Article 19 amendments and translations of annexes to the international preliminary examination report, if applicable). ( § 371(f) ). If the inventor oaths/declarations are missing, the USPTO will not begin substantive national phase processing early.

Also, when filing for early U.S. national phase entry before the PCT international application has been published by the International Bureau, it is further required to submit a copy of the PCT Request ( form PCT/RO/101) to the USPTO. Although not strictly required, it is strongly recommended to further submit a copy of the Notification of the International Application Number and of the International Filing Date under PCT Rule 20.2(c) (form PCT/RO/105 )—which serves as an acknowledgement or filing receipt from the receiving office. In this situation, the PCT Request (PCT/RO/101) and filing receipt Notification (PCT/RO/105) should be provided even if not in English.

Under normal circumstances, filing a complete new application or national phase entry in the U.S. automatically initiates the examination process. In many other countries, by contrast, a separate examination request must be made. Even though applicants cannot control the timing of U.S. examination through examination requests, there are procedures available to either defer or suspend examination for limited times. Each of these procedures requires an explicit request or petition and payment of an additional official fee. Both types of requests are rare.

A request to defer examination (under 37 C.F.R. § 1.103(d) ) can be for up to three (3) years (36 months) from the earliest claimed priority date. This translates into a maximum of six (6) months after the 30-month PCT national phase entry deadline. Deferring examination requires making certain submissions, including submitting a request form and payment of an official processing fee . But it is not required to provide any reason or justification for the requested deferral.

Suspension of examination (under 37 C.F.R. § 1.103(a) ) for a maximum of six (6) months is only permitted for “good and sufficient cause” establishing that suspension is necessary. An official petition fee is also required to suspend examination.

The deadlines to file a patent application in the USA with a foreign priority claim are twelve (12) months (for direct applications under the Paris Convention) or thirty (30) months (for PCT international applications) from the earliest priority date. However, for U.S. design patent applications, the priority filing deadline is only six (6) months from the earliest priority date. If a filing deadline falls on a Saturday, Sunday, or U.S. federal holiday (within the District of Columbia), the filing deadline is automatically extended to the next succeeding secular or business day.

If an application filing deadline is missed, late filing in the U.S. based on a priority claim to an earlier PCT, Paris Convention (including designs), or U.S. provisional application may still be permitted if entire delay was unintentional. In all cases, late filing requires submission of a petition and fee. The applicant must be ready to present evidence to substantiate assertion that entire delay was unintentional, and such information must be made available to U.S. counsel in order to substantiate the grounds for the petition. The USPTO may request and require additional evidence before it will permit late filing.

For late Paris Convention or provisional priority filing, the period of unintentional delay is limited to two (2) months ; that is, the applicant must file the U.S. application by fourteen (14) months from the earliest priority date for a utility application or eight (8) months from the earliest priority date for a design application. Such late filings involve a petition to restore the right of priority and payment of an official fee .

For late PCT cases (beyond 30 months from the earliest priority date), there is no fixed limit on the length of unintentional delay for revival of international application to permit the filing of a national phase entry or a “bypass” application. However, the USPTO applies more scrutiny with longer delays and it naturally is more difficult to establish unintentional delay over longer periods of delay. Such late filings based on a PCT application involve a petition for revival of an international (PCT) application designating the USA abandoned unintentionally and payment of an official fee .

If a priority filing deadline is missed, and an applicable late filing period is not available, filing in the U.S. without a priority claim might still be possible in some situations. For instance, the U.S. one-year patent application grace period may exclude as prior art a patent or patent application publication one year or less old by at least some of the same inventor(s) and no one else or, alternatively, that is subject to common ownership or a common obligation to assign, including under a qualifying joint research agreement. This means, as something of a last resort, a U.S. filing up to one (1) year after a prior patent publication by the applicant may still be possible without a priority claim.

Additionally, after a U.S. application has already been filed, a delayed assertion of a claim of priority, a revival after abandonment, or late issue fee payment may also be possible in some circumstances when the entire delay was unintentional. In this context, the USPTO handles petitions to restore the right of priority (where a priority filing deadline in the U.S. is missed, as discussed above) differently than petitions to accept an unintentionally delayed priority claim (where a U.S. application was actually filed by the applicable priority filing deadline but was filed without reference to the priority application and a priority claim is desired to be retroactively added to the already-filed U.S. application).

Guidance About the Format and Substantive Content of a Patent Application Entering the USA

The following are suggestions and recommendations regarding preferred and required format for U.S. patent applications. Many of these notes and comments pertain to the ways that U.S. patent laws and practice differ from those of other countries. These comments are made to alert foreign patent attorneys about areas where modifications and amendments may be necessary or desirable in order to better present a U.S. patent application in order to help simplify examination and help secure desired scope of coverage and enforceability. These are potentially wide-ranging topics and the following selected notes address only some of the most commonly encountered issues.

Some Notes on Patentability and Patent Eligibility

The U.S. has both on-sale and public use bars. That is, pre-filing commercial sales (including commercial offers for sale and leasing) or public use of an invention by an inventor/applicant can qualify as prior art that potentially bars patenting and even secret or confidential commercial sales (and offers for sale) can still be prior art against an application. Such on-sale and public use bars now apply to pre-filing activities regardless of whether they took place in the USA or in a foreign country. However, there is a one-year grace period (prior to the “effective filing date” of a given claim) for an inventor’s own public disclosures and/or sales. Disclosures or sales within that grace period will not qualify as prior art and will have no adverse effect on patentability .

Laws of nature, natural phenomena, and abstract ideas are not patent eligible in the U.S. (they lack utility). Patent eligibility is an area of U.S. patent law where it can be difficult to know in advance what will or will not be deemed acceptable. Though these questions arise most frequently for software-related inventions (as abstract ideas), methods/processes that rely on generic computerization (as abstract ideas), business methods (as abstract ideas), biotechnology (as natural phenomena), and medical diagnosis or treatment inventions (as laws of nature or natural phenomena). More generally, these issues tend to arise for “preemptive” claims. Those are claims that courts have said lack any inventive concept beyond a mere drafting effort to monopolize an abstract idea, law of nature, or natural phenomenon itself, which inhibit further invention by improperly tying up the future use of these building blocks of human ingenuity. This might arise , for instance, through use of functional claim language at no more than a high level of generality, divorced from any specific technical solution, which fails to recite how to perform a functionally-recited result beyond a generic or superficial reference to use of convention computer components. However, the USPTO and many lower court decisions have avoided direct reference to “preemption”.

The USPTO has provided some guidance that may help understand patent eligibility requirements: see https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility and MPEP 2106 et seq. However, some argue that the USPTO’s current examiner guidance departs from controlling court decisions. That means a patent might be granted under current USPTO procedures but still be at risk of later invalidation.

It may be beneficial (and possibly necessary) to re-write claims to satisfy U.S. patent eligibility (utility) requirements. For example, for software-related inventions, try “Beauregard” or “CRM” claims: convert a pure software recitation (such as “A program comprising…”) into a recitation of an article of manufacture as a tangible computer-readable medium (or a non-transitory computer-readable medium) comprising program instructions for carrying out a method stored on that computer-readable medium or as a computer processor programmed to carry out specific recited steps. For chemical inventions, try reciting markedly different characteristics (MDC) over and above a mere product of nature.

More generally, it is helpful to ensure that an application contains enough substantive disclosure of relevant structures and process steps to support claims reciting a specific (non-generic) means or method that improves the relevant technology, transformations effected on physical matter, or the like. For example, it can be helpful to disclose in the specification (detailed description of the invention) how a claimed software-enabled invention improves the function or operation of a computer as a tool, rather than merely providing more efficient collection/selection, manipulation, or presentation of data or an allegedly improved user experience in the abstract. U.S. practice allows fairly liberal claim amendments, including the addition of new or different claims after an application is filed. But any such new or amended claims must have support in the original disclosure (including the figures). So having a robust disclosure helps facilitate later amendments to the claims if patent eligibility issues arise.

Some Notes on Claims

The following are comments about claim format and the words sometimes used in claims. U.S. patent claims must generally follow a “peripheral” claiming regime, which involves “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” This means each claim must set forth with reasonable certainty and clarity the outermost boundary (periphery) of the patentable invention.

U.S. claims are customarily formatted with hanging indents for each distinct clause, though such formatting is not a mandatory requirement. U.S. claim dependencies are customarily ordered in a depth-first format.

Reference numbers in claims are not required under U.S. practice, though their presence (in parentheses) is permitted. Removal of reference numbers from the claims is generally recommended. If acronyms are used in the claims, they should preferably be introduced first in full form with the acronym in parentheses.

Multiple dependent claims are disfavored under U.S. practice. While technically available, there are prohibitive official fees for any multiple dependent claims. Additionally, regulations prohibit a multiple dependent claim from serving as a basis for any other multiple dependent claim. So it is necessary to remove any nested multiple claim dependencies. For all these reasons, it is recommended to remove any and all multiple claim dependencies at the time of U.S. filing. As an alternative, it may be preferable to present multiple stand-alone (new) dependent claims in place of a single multiple dependent claim with comparable overall scope, if so desired—though extra claim fees might apply.

“Characterizing” two-part claim format is permitted in the U.S., where it is referred to as Jepson format. However, such a format is not required and may be less desirable than other claim formats in many circumstances. It is often recommended to omit “characterized in that” or “wherein the improvement comprises” claim language for U.S. filing.

Peripheral claiming as utilized in the USA differs from “central” claiming that instead refers only to a central inventive concept (with boundaries of protection usually left to be determined in a later enforcement action). In general, peripheral claiming in the USA involves “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention” so as to “inform those skilled in the art about the scope of the invention with reasonable certainty ,” when viewed in light of the specification (detailed description), prosecution history, and the knowledge available to persons of ordinary skill in the art. These standards may not be satisfied if a claim merely points to a central inventive concept. This is especially the case where purely functional claim language recites only a desired result (without being limited to any particular structure for achieving it). Claims originating from a country that allows more of a central claim format should be revisited for filing in the U.S., due to the differences in the legal standards applied.

Means-plus-function claim format (“means for…[performing a stated function]”) is a limited type of central claiming that is permitted but given a special (narrow) construction in the U.S. It is referred to as step-plus-function format for method/process claim limitations. In many other countries use of the word “means” is considered broad but the U.S. is different in that respect. So-called single means claims are not permitted ; any means-plus-function recitation must appear in combination with at least one other claim limitation. Also, under somewhat controversial recent court rulings that have been implemented by the USPTO, functional claim language might be interpreted as a means-plus-function recitation even without the words “means for” or “step for” appearing in the claim. This issue may merit further attention if a claim limitation is drafted in the same format as a traditional means-plus-function limitation and merely replaces the term “means” with a nonce word like “module”, “mechanism”, “element”, or “device” to connote merely a generic “black box” for performing the recited function(s), without recitation of any further structural limitations. Though it might potentially arise with other functional recitations too, such as where “configured to”, “adapted to”, or “operable to” claim language replaces the words “means for”. If means-plus-function claiming is invoked, the disclosure (including the description/specification and drawings) should be reviewed to ensure that enablement and definiteness is achieved (see discussion of specifications below).

Omnibus claims are not allowed because they do not follow peripheral claiming. That is, U.S. claims cannot recite “A device substantially as shown and described” or the like because the meets-and-bounds of the outer periphery of scope is not made definite by such a claim. But specific references in claims to a table or a chemical formula shown in the drawings may be permitted in some (exceptional) circumstances.

Conditional method/process recitations (such as steps recited using the word “if…”) may be disregarded during examination. These are also referred to as “contingent limitations” that depend on a “condition precedent”. Contingent/conditional steps should ideally be re-written, moved to a dependent claim, or omitted entirely.

Product-by-process recitations in a product/apparatus claim are disfavored because the purely process-related steps are ignored during examination but are required for infringement. Product-by-process recitations are only given weight for the product structure they imply but are given no patentable weight during examination as to the recited way of making the structure, meaning they will not be considered patentable if they recite a new way of making a known structure. It is often desirable to instead present either a claim to a method of making a product, or to the result product structure only, or both.

Use of alternative recitations and the word “or” (and “and/or”) can be scrutinized, because it may be considered indefinite or unclear in many situations. Under U.S. practice, so-called Markush group format (“selected from the group consisting of…”) is used to recite a closed list of specified alternatives. Along similar lines, use of open-ended or exemplary claim terminology, like “etc.”, “and the like”, “for example”, “preferably”, “optionally”, or “such as”, is not permitted and should be removed at the time of U.S. filing.

Relative terminology, including terms of degree or approximation, like “substantially” or “approximately”, may be permitted. So it is not necessary to automatically remove such terms from the claims when filing in the USA. However, the acceptability of such terms depends on the context in which they are used. Such terms of degree are not permitted if they make the scope of the claim indefinite. Acceptability thus depends on whether one of ordinary skill in the art would understand what is (and is not) claimed in light of the entire specification. In some situations, this means that acceptability may depend on whether the specification (detailed description) provides some standard or guidelines for measuring or assessing a term of degree as claimed.

Support for claims can be provided by the drawings or the original claims alone, in addition to any text of the specification (detailed description). U.S. law is more liberal than some foreign jurisdictions in allowing variations in terminology.

Use of trademarks or trade names to state limitations in claims is not permitted . This is because the composition of a brand-name chemical formula may change over time despite use of the same trademark or trade name to identify it, for instance. References to trademarks or brand-name products should be replaced with generic terms. Discussion of particular brands of the generic product can be included in the detailed description portion of the specification, where such marks should be explicitly identified as trademarks through the use of appropriate symbols (namely, ®, TM , or SM ).

A “broadest reasonable interpretation” standard is used by examiners at the USPTO when examining claims of a pending application. However, a different interpretive standard is applied to a granted patent, such as when enforced in court. The reason for that difference is that an applicant can amend claims during prosecution and so has opportunities to clarify the claim scope that are not readily available after a patent is granted.

Some Notes on Specifications (Detailed Descriptions of Inventions)

If any claims use the word “means”, or recite a limitation in purely functional terms that might be construed as a means-plus-function recitation (see above ), then the applicant is subject to certain obligations to disclose “ corresponding structure ” (discussed further below) to achieve the claimed function elsewhere in the specification and/or drawings. Use of means-plus-function claiming does not allow an applicant to avoid disclosing and limiting the means-plus-function recitation to particular structures (and their known equivalents)—a reason it is often considered a narrow claim format in the U.S. unlike in many other countries. If an application fails to disclose adequate corresponding structure, the claim invoking means-plus-function claim format is considered indefinite. Thus, the acceptability of means-plus-function claims depends on the adequacy of the disclosure in the specification (that is, the description and drawings), which is somewhat context-specific. Merely generic restatements of function may not be sufficient. Instead, the portion of the specification describing the invention in detail (detailed description) should use structural terms beyond the word “means” sufficient and adequate to allow a person of ordinary skill in the art to implement the functional claim language as an integral whole based on specific teachings.

Interpretation of means-plus-function claim language requires determining what structure, if any, disclosed in the specification (including both the detailed description and drawings) corresponds to the claimed function. Disclosed structure is deemed “corresponding structure” only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. If the claimed function is performed by a general-purpose computer or microprocessor, for instance, then establishing corresponding structure further requires disclosure of the algorithm that the computer performs to accomplish that function. The corresponding structure in such situations is not the general purpose computer alone but rather the special-purpose computer programmed to perform the disclosed algorithm. Though, on the other hand, disclosure of a specific algorithm may not be required when the identified structure is not a general-purpose computer or processor.

Also use care when characterizing “the invention”. Wording in an application that identifies “the invention” as one specific thing (only) may limit claim scope and preclude claiming alternatives. That is , a broad claim is not supported when the entirety of the specification clearly indicates that the invention is of a much narrower scope. It is preferable to disclose and describe possible embodiments as mere examples. Additionally, if it might be desirable to later exclude something from the claims, such as through a negative limitation, then the disclosure should make clear that some or all alternatives can be omitted.

Use of “object” statements is discouraged. These are not required under U.S. practice. Ideally, such statements should be removed or re-worded for U.S. filing.

If “examples” are included in the disclosure, working examples should use the past tense while prophetic (or “paper”) examples should use the future or present tense to make clear their merely prophetic nature.

Applications that contain disclosures of nucleotide and/or amino acid sequences must present the associated biological sequence data in a standardized electronic eXtensible Markup Language (XML) format compliant with World Intellectual Property Organization (WIPO) Standard ST.26 . This sequence listing is a separate part of the application (referred to as a “Sequence Listing XML” ) incorporated by reference into the main part of the specification, with individual sequences referenced with sequence identification numbers. Sequence Listing XML files can be generated with the free WIPO Sequence software. The requirement for a Sequence Listing XML submission only applies to disclosures of ten (10) or more specifically defined nucleotides, or four (4) or more specifically defined amino acids. Shorter disclosures of biological data instead must instead be presented only in the specification (description) in the normal format of all other general disclosures. The USPTO’s Sequence Listing Resource Center provides further information about these requirements.

Incorporations by reference are permitted . However, the timing of such an incorporation by reference determines whether it constitutes an impermissible addition of new matter. Moreover, care should be used when incorporating materials by reference so that unintended disclosures or confusion/conflict is not produced, such as when a series or chain of incorporations by reference to multiple documents is created.

The substantive text of the specification (description) should preferably avoid use of square brackets (“[ ]”). Instead, use parentheses (“( )”) or, alternatively, curly brackets/braces (“{ }”). While not formally prohibited, square brackets (“[ ]”) and double square brackets (“[[ ]]”) are used in various contexts to denote matter deleted from a U.S. application or patent, and are printed in reissue patents to indicate deletions. By avoiding the use of square brackets around substantive disclosure text, applicants can help reduce the possibility of confusion with deleted matter.

Page numbers are required, which should appear in a footer. Paragraph numbering is preferred (using at least four digits inside square brackets, such as “[0001]”) and, indeed, is required for submissions in DOCX format.

Lastly, the abstract has a limit of 150 words, and it should not use claim-like terms (“wherein”, etc.). The Abstract must also appear on a separate page of the application. Ordinarily the Abstract does not include any reproduced drawing. Although images of chemical formulae or equations used in claims can appropriately appear in an Abstract. Also, it is not necessary to include reference numbers in the abstract and it is generally recommended to remove the reference numbers from the abstract for U.S. filing.

Some Notes on Drawings

In U.S. utility patent applications, a drawing must be provided “where necessary for the understanding of the subject matter sought to be patented.” USPTO regulations further state that the drawing(s) “must show every feature of the invention specified in the claims.” These drawing requirements must further be assessed in terms of whether the claimed subject matter lends itself to illustration. Determinations about the necessity of drawings is highly dependent on the nature of the claimed invention. As one example, an application that is directed to a chemical/biological composition may not require a drawing—particularly where important chemical formulas or tables of data are already present in the specification (description). However, design applications always require at least one drawing, because the drawing(s) define the claimed subject matter.

Figures for U.S. patent applications should be black-and-white line drawings with clean lines and clear, non-blurry text. All such text must be oriented in the same direction on a given sheet (with the limited exception of labels on different axes of graphs). Use of grayscale shading or fill is usually objected to during examination—use stippling, cross-hatching, or the like instead (see suggested formats below). Photomicrographs or the like can be acceptable, though photographs are not ordinarily permitted. Color drawings require a petition and official fee and therefore are disfavored and to be avoided (except for plant patents, where they may be needed if color is a distinguishing characteristic). PCT Rule 11.13(a) prohibits coloring in international application drawings, so any coloring that does exist at U.S. national phase entry must ordinarily be removed.

Depictions of only prior art must be labeled “(PRIOR ART)” or carry a similar indication.

Drawings for U.S. applications must also comply with page margin requirements ( 37 C.F.R. § 1.84(g) ). Each drawing sheet must include a top margin of at least 2.5 cm (1 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 1.5 cm (5/8 inch), and a bottom margin of at least 1.0 cm (3/8 inch), thereby leaving a sight no greater than 17.0 cm by 26.2 cm on 21.0 cm by 29.7 cm (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm by 24.4 cm (6 15/16 by 9 5/8 inches) on 21.6 cm by 27.9 cm (8 1/2 by 11 inch) drawing sheets. Sheet numbering (preferably in the format of [page number]/[total pages], e.g., “1/3”) and any optional title or similar identifications should be placed in the margins (customarily the top margin). It is important that page numbering and the like be clearly separated from the substantive drawings without overlap so that the USPTO can crop the figures to omit margin material for publication.

Also, numbers, letters, and reference characters in drawings must measure at least 0.32 cm (1/8 inch) in height ( 37 C.F.R. § 1.84(p) ). This size requirement is partly because drawings are reduced in size for publication, and text that is too small might become illegible. Character/text size requirements for drawings are usually satisfied by 12 point font in all capital letters.

One other confusing aspect of U.S. practice is that if there is only one figure, it is necessary to omit a “FIG. 1” label ( 37 C.F.R. § 1.84(u)(1) ). That drawing can be referred to as the “sole figure” in the text (specification/description).

Drawing informalities can often be fixed after initial filing. Though “new matter” cannot be added in new or amended drawings after an application is filed. In situations where a drawing is not necessary for the understanding of the invention but the claimed subject matter still admits of illustration by a drawing that the applicant has not furnished, the USPTO may later require submission of suitable drawing(s)—such an omission is treated as an informality.

The USA treats designs under its patent laws, whereas many other countries treat “industrial designs” as a separate type of IP or one more closely associated with trademark (or trade dress) law. As a result, foreign priority design registrations are usually not in a format directly usable as a U.S. design application—this is one reason Hague international design applications designating the USA may not always be ideal. U.S. design patent applications require a text specification plus at least one drawing. It may be necessary to prepare a new specification for filing in the USA when a foreign priority design registration consists primarily of images or drawings alone.

U.S. design patent application drawing requirements are substantially different from other countries. The basic U.S. design drawing requirements are similar to those of utility patent applications (see above ), but with some exceptions explained below. Photographs are not ordinarily accepted, and can never be intermixed with line drawings. Also, it may be necessary to include additional views (or a textual explanation that the side(s) of the article not illustrated are unornamented)—though single-view design applications may be permissible in some situations particularly where additional views would merely be duplicative. But the most important aspects of U.S. design practice have to do with the use of shading and broken lines in drawings.

Shading lines are used to show curves and flat surfaces in depicted articles (see example 1 and example 2 ). Stippling can also be used (see example ). While surface shading is not always required, it may be necessary in particular cases to show clearly the character and contour of all surfaces of any three-dimensional (3D) aspects of the design. Surface shading may also be necessary to distinguish between any open and solid areas of the depicted article.

Broken (dashed) lines are used to indicate unclaimed matter in design applications (see example 1 , example 2 , and example 3 ), including to define the scope of the claim and to show unclaimed but associated environment. This is a major difference from design practice in many other countries where broken lines or unclaimed matter are sometimes not permitted—it also is different from drawing standards for U.S. utility applications. In this respect, U.S. practice allows for partial design claims. This makes the selection and use of dashed lines an important consideration affecting the scope of the claimed subject matter. For instance, broken lines can be used to indicate that a boundary exists but is unclaimed, which might be used to claim a design without limiting the claim based on the illustration of particular overall dimensions.

While the scope of the claim in a design application is focused on what is illustrated in the drawing(s), the text of a design application can also limit the claim. For instance, the title can limit the scope of the claim, such as limiting the claimed design to a particular useful article even if that particular article is not illustrated in the drawings.

The USPTO provides a design application guide that further describes basic requirements. A further discussion of common mistakes in U.S. design applications, with numerous examples, is available here .

Prosecution history estoppel may attach and limit the scope of a design patent claim if one or more alternative embodiments shown in the originally-filed drawings are later deleted for a reason related to patentability, such as following a restriction requirement (which is somewhat like a lack of unity rejection). The applicant can often file a divisional application to protect a deleted embodiment in that situation. However, the treatment of alternative embodiments and estoppel with design applications places some importance on whether or not alternative designs should be included in the same application or not and whether a partial design claim using broken lines is preferable instead—something that will depend on context-specific, case-by-case factual and strategic considerations. If multiple embodiments are included, the applicant should envision filing divisional application(s) to pursue additional inventions if a restriction requirement is issued.

Moreover, the USPTO and its reviewing appeals court have limited changing solid lines to broken after filing to later introduce a broader partial claim. In other words, the USPTO generally does not allow the scope of the claimed design to be significantly broadened by changing an existing solid line to a broken line after filing—including in a continuation application. This is a controversial position based on a U.S. appeals court reading a so-called “written description” possession requirement into the U.S. patent statutes (relating to enablement) against their plain language and grammar.

Presentation slides with information from this U.S. patent filing guide can be downloaded here .

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Understanding Priority Claims for U.S. Patent Applications: Part 1

This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.

In general, for examination purposes at the U.S. Patent and Trademark Office (USPTO), a priority claim determines the priority date of a patent application.  But why is that important?  Because the priority date effectively determines what references can and cannot be asserted as prior art against a patent application during its examination.  That is, the priority date draws a line in the sand for prior art, and this line cannot be crossed.

A priority claim is made to an earlier-filed patent application.  For example, an Applicant can claim priority in a later-filed patent application to earlier-filed U.S. provisional applications, U.S. nonprovisional applications, PCT applications, and/or foreign (i.e., non-U.S. Paris Convention signatory) applications.  In order for a priority claim to be effective, certain conditions must be met.  These specific conditions are set forth in 35 U.S.C. §119(e) and 37 C.F.R. § 1.78(a) for a priority claim to earlier-filed provisional applications, 35 U.S.C. § 120 and 37 C.F.R. § 1.78(d) for a priority claim to earlier-filed nonprovisional applications or PCT applications, and 35 U.S.C. §119(a)–(d) and 37 C.F.R. § 1.55 for a priority claim to earlier-filed foreign applications.

Generally, a priority claim is properly made when:

• the later- and earlier-filed patent applications include a  common inventor or joint inventor ;
• the later-filed patent application makes a  specific reference  to the earlier-filed patent application(s);
• the claim is made within  16 months  from the filing date of the earliest-filed application  or   4 months  from the filing of the later-filed patent application; and
• the later-filed patent application is filed  before or on the same day  as the grant or abandonment of the earlier-filed patent application.

Additional Comments on Specific Reference to an Earlier-filed Patent Application(s)

Per 37 C.F.R. §1.78(d)(2), the later-filed patent application must specifically reference (1) the serial number of the earlier-filed patent application(s) and (2) the relationship between the later- and earlier-filed patent applications (e.g., a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application).  Further, if the later-filed patent application is a U.S. nonprovisional, the specific reference must be made in an Application Data Sheet (ADS) for the later-filed patent application.

While not required, it is good U.S. patent practice for an applicant to include a “Cross-Reference To Related Application(s)” section within a patent application that includes a specific reference to the earlier-filed patent application(s).  Examples of “Cross-Reference To Related Application(s)” sections are listed below.  Further, while not required, it may be beneficial for the applicant to include an incorporation by reference statement as shown in the below examples.

EXAMPLE 1: Priority Claim to a Provisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Patent Application No. ##/###,###, filed July 1, 2018, which is incorporated by reference herein in its entirety.

EXAMPLE 2: Priority Claim to a Nonprovisional Application

This application is a continuation of U.S. Patent Application No. ##/###,###, filed July 1, 2018, which is incorporated by reference herein in its entirety.

EXAMPLE 3: Priority Claim to a Chain of Nonprovisional and Provisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of U.S. Patent Application No. ##/###,###, filed July 1, 2018, which is a continuation of U.S. Patent Application ##/###,###, filed July 1, 2017, which claims the benefit of U.S. Provisional Patent Application No. ##/###,###, filed July 1, 2016, each of which is incorporated by reference herein in its entirety.

EXAMPLE 4: Priority Claim to a PCT Application

This application is a national stage application, filed under 35 U.S.C. § 371, of International Patent Application No. PCT/US####/######, filed on July 1, 2018, which is incorporated by reference herein in its entirety.

While the above discussion provides a general overview of priority claims and how to make them, applicants are encouraged to consider when and whether to file various papers under every application’s particular circumstances and to verify disclosure requirements according to the current rules and regulations of the USPTO.

Subscribe To Viewpoints

• July 11, 2018

Viewpoint Topics

• Intellectual Property

Professionals

Christina sperry, elissa m. kingsland.

Search keyword

Managing the priority disconnect between us and european patents.

Europe and the US are important trading partners, so protecting patentable innovations in these two markets is the foundation of many corporate patent portfolios. However, a first patent filing in the US can cause issues obtaining subsequent protection in Europe, as Nadège Lagneau explains.

We have written previously how priority arrangements made according to US practice can lead to issues with European Patent (EP) applications (‘ Lessons from CRISPR ’). If protection in Europe is also desired for US inventions, it’s important to be vigilant therefore.

A question of ownership

Unless otherwise agreed by contract, the owner of a US patent application is the inventor. Indeed, unlike in other countries, it is not legally provided in the US that the employer owns the innovations of a salaried inventor. In Europe, on the other hand, patent applications are filed (including in the EPC and PCT systems) in the name of the employer.

This disparity in ownership between the priority US patent application and a subsequent patent application claiming priority can be problematic in Europe. Indeed, the priority claim of the subsequent patent application can be challenged in opposition proceedings, leading to invalidation of the priority claim, if the ownership of the right of priority cannot be conclusively demonstrated.

In addition, the loss of a priority claim generates the very real risk of revocation of the patent due to the publication of prior art in the dates between the filing of the priority US patent application and that of the subsequent application; for example, in an article by the inventors.

Navigating the American right of priority

Although the America Invents Act (AIA) provides that US patent applications can now be filed by designating employers as applicants/owners, under US law, inventors named on a US patent application are presumed to own the invention, except in the case of contrary contractual provisions (e.g. an employment contract or via assignment). In the absence of a specific assignment signed by the inventors, it is up to the employer to prove that they are indeed the owner of the rights to the invention that is the subject of the priority patent application.

This is why, for the very first patent filing in the US – whether a provisional or regular patent application – it is generally preferable to have the inventors sign an assignment shortly after the filing and, in any event, before the filing of the subsequent patent application (eg PCT or EP) claiming priority of the US patent application.

Ideally, the assignment document should mention the assignment of the inventors' rights to the invention that is the subject of the priority US patent application, as well as the assignment of the priority right (which is a right distinct from the right to the invention) to their employer/supervisory institution.

It is a simple and inexpensive precaution that can help the applicant to avoid complicated debates in Europe (e.g. if the priority claim is challenged by a third party in opposition), and makes it possible to secure the priority claim in the case of a first patent filing in the US.

Advice to applicants

In summary, our advice for any first filing in the US, generating a priority right, is to:

• have your inventors sign a specific assignment (covering, at least, the number of the US patent application, its filing date and its title), assigning their rights to the invention and the right of priority, to their employer/supervisory institution;
• register the assignment(s) at the USPTO (usually one assignment per employer/parent institution); and
• complete the above before filing the subsequent patent application (e.g. PCT or direct EP patent filing) claiming priority of the US patent application.

As a general rule, it is also advisable to ask any related partners/institutions with whom the first US patent application is filed to follow these steps, whether or not these partners or institutions are American.

For further detail or specific support, please get in touch with one of our European Patent Attorneys for further guidance or support, or contact us below .

Nadège Lagneau is a European and French Patent Attorney based in Novagraaf’s Paris office.

Contact us for more information

Latest news, webinars & events, [trademark event] we hope to see you at marques 2024.

We hope to see you at this year's MARQUES Annual Conference in Stockholm on 24-27 September.

MARQUES conference 2024: Trademarks, traits and trust 

With trademark attorneys uniquely placed at the cross-section of legal, product and business consulting, a broader range of skills is required to support clients and adapt to new industry trends and technologies. Little wonder this year’s MARQUES conference takes as its theme the ‘many traits of the trademark expert’, says Luke Portnow.  

How a trademark audit can support a global brand

How effective is your trademark portfolio? Discover how a trademark audit can support brands with an international presence or global expansion plans.

For more information, please contact us

Trending News

Related Practices & Jurisdictions

• Intellectual Property
• All Federal

This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.

In general, for examination purposes at the U.S. Patent and Trademark Office (USPTO), a priority claim determines the priority date of a patent application.  But why is that important?  Because the priority date effectively determines what references can and cannot be asserted as prior art against a patent application during its examination.  That is, the priority date draws a line in the sand for prior art, and this line cannot be crossed.

A priority claim is made to an earlier-filed patent application.  For example, an Applicant can claim priority in a later-filed patent application to earlier-filed U.S. provisional applications, U.S. nonprovisional applications, PCT applications, and/or foreign (i.e., non-U.S. Paris Convention signatory) applications.  In order for a priority claim to be effective, certain conditions must be met.  These specific conditions are set forth in 35 U.S.C. §119(e) and 37 C.F.R. § 1.78(a) for a priority claim to earlier-filed provisional applications, 35 U.S.C. § 120 and 37 C.F.R. § 1.78(d) for a priority claim to earlier-filed nonprovisional applications or PCT applications, and 35 U.S.C. §119(a)–(d) and 37 C.F.R. § 1.55 for a priority claim to earlier-filed foreign applications.

Generally, a priority claim is properly made when:

• the later- and earlier-filed patent applications include a  common inventor or joint inventor ;
• the later-filed patent application makes a  specific reference  to the earlier-filed patent application(s);
• the claim is made within  16 months  from the filing date of the earliest-filed application  or   4 months  from the filing of the later-filed patent application; and
• the later-filed patent application is filed  before or on the same day  as the grant or abandonment of the earlier-filed patent application.

Additional Comments on Specific Reference to an Earlier-filed Patent Application(s)

Per 37 C.F.R. §1.78(d)(2), the later-filed patent application must specifically reference (1) the serial number of the earlier-filed patent application(s) and (2) the relationship between the later- and earlier-filed patent applications (e.g., a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application).  Further, if the later-filed patent application is a U.S. nonprovisional, the specific reference must be made in an Application Data Sheet (ADS) for the later-filed patent application.

While not required, it is good U.S. patent practice for an applicant to include a “Cross-Reference To Related Application(s)” section within a patent application that includes a specific reference to the earlier-filed patent application(s).  Examples of “Cross-Reference To Related Application(s)” sections are listed below.  Further, while not required, it may be beneficial for the applicant to include an incorporation by reference statement as shown in the below examples.

EXAMPLE 1: Priority Claim to a Provisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Patent Application No. ##/###,###, filed July 1, 2018, which is incorporated by reference herein in its entirety.

EXAMPLE 2: Priority Claim to a Nonprovisional Application

This application is a continuation of U.S. Patent Application No. ##/###,###, filed July 1, 2018, which is incorporated by reference herein in its entirety.

EXAMPLE 3: Priority Claim to a Chain of Nonprovisional and Provisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of U.S. Patent Application No. ##/###,###, filed July 1, 2018, which is a continuation of U.S. Patent Application ##/###,###, filed July 1, 2017, which claims the benefit of U.S. Provisional Patent Application No. ##/###,###, filed July 1, 2016, each of which is incorporated by reference herein in its entirety.

EXAMPLE 4: Priority Claim to a PCT Application

This application is a national stage application, filed under 35 U.S.C. § 371, of International Patent Application No. PCT/US####/######, filed on July 1, 2018, which is incorporated by reference herein in its entirety.

While the above discussion provides a general overview of priority claims and how to make them, applicants are encouraged to consider when and whether to file various papers under every application’s particular circumstances and to verify disclosure requirements according to the current rules and regulations of the USPTO.

Current Public Notices

Current legal analysis, more from mintz, upcoming legal education events.

Sign Up for e-NewsBulletins

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0200
• Section 216

216 Entitlement to Priority [R-07.2022]

When the claim to priority and the certified copy of the foreign application are received while the application is pending before the examiner, the examiner generally makes no examination of the papers except to see that they contain no obvious formal defects and correspond in number, date and country to the application identified in the application data sheet for an application filed on or after September 16, 2012, or oath or declaration or application data sheet for an application filed prior to September 16, 2012. In addition, for original applications filed under 35 U.S.C. 111(a) (other than design applications) and international applications entering the national stage under 35 U.S.C. 371 , the examiner should make sure that the claim for foreign priority is timely. Examiners may use form paragraph 2.21.01 to notify applicant that the foreign priority claim is untimely. See also MPEP § 214.03 .

The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons. For example, the examiner considers the merits of an applicant’s claim of priority when a reference is found with an effective date between the date of the foreign filing and the date of filing in the United States, when determining whether a reference's prior art date is within the grace period for the application under examination, and when an interference situation is under consideration. If at the time of making an action the examiner has found such an intervening reference, the examiner simply rejects whatever claims may be considered unpatentable thereover, without paying any attention to the priority date (assuming the certified copy of the priority papers has not yet been filed). The applicant in reply may argue the rejection if it is of such a nature that it can be argued, or present the foreign papers for the purpose of overcoming the date of the reference. If the applicant argues the reference, the examiner, in the next action in the application, may specifically require the foreign papers to be filed in addition to repeating the rejection if it is still considered applicable, or the examiner may merely continue the rejection.

Form paragraph 2.19 may be used in this instance.

¶ 2.19 Overcome Rejection by Translation

Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55 . When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216 .

Examiner Note:

This paragraph should follow a rejection based on an intervening reference.

In those cases where the applicant files the certified copy of the foreign application for the purpose of overcoming the effective date of a reference, a translation is required if the certified copy is not in the English language. When the examiner requires the filing of the certified copy, the translation should also be required at the same time. If an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) and it must be filed together with a statement that the translation of the certified copy is accurate. When the necessary certified copy and translation are filed to overcome the date of the reference, the examiner’s action, if the examiner determines that the applicant is not entitled to the priority date, is to repeat the rejection on the reference, stating the reasons why the applicant is not considered entitled to the date. If it is determined that the applicant is entitled to the date, the rejection is withdrawn in view of the priority date.

If the certified copy, and translation if necessary, is already in the file when the examiner finds a reference with the intervening effective date, the examiner will study the certified copy, if it is in the English language, to determine if the applicant is entitled to the priority date. If the applicant is found to be entitled to the priority date, the reference is not relied upon as prior art, but may be cited to applicant on form PTO-892. If the applicant is found not entitled to the date, the unpatentable claims are rejected on the reference with an explanation. If the certified copy is not in the English language and there is no translation, the examiner may reject the unpatentable claims and at the same time require an English translation (the translation must be that of the certified copy (of the foreign application as filed) that is submitted together with a statement that the translation of the certified copy is accurate) for the purpose of determining the applicant’s right to rely on the foreign filing date.

The foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant. In such cases, if the certified copy of the foreign application corresponds with the one identified in an application data sheet, or for applications filed prior to September 16, 2012, in an application data sheet or in the oath or declaration filed under 37 CFR 1.63 (see 37 CFR 1.55(n) ) and no discrepancies appear, it may be assumed that the nonprovisional application is entitled to claim priority to the foreign application. If the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. See also MPEP § 213.02 .

The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the foreign applications. The foreign application may be considered in the same manner as if it had been filed in this country on the same date that it was filed in the foreign country, and the applicant is ordinarily entitled to any claims based on such foreign application that applicant would be entitled to under U.S. laws and practice. The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 as well as to determine if there is a basis for the claims sought.

In applications filed from the United Kingdom there may be submitted a certified copy of the “provisional specification,” which may also in some cases be accompanied by a copy of the “complete specification.” The nature and function of the United Kingdom provisional specification is described in an article in the Journal of the Patent Office Society of November 1936, pages 770-774. According to United Kingdom law the provisional specification need not contain a complete disclosure of the invention in the sense of 35 U.S.C. 112 , but need only describe the general nature of the invention, and neither claims nor drawings are required. Consequently, in considering such provisional specifications, the question of completeness of disclosure is important. If it is found that the United Kingdom provisional specification is insufficient for lack of disclosure, reliance may then be had on the complete specification and its date, if one has been presented, the complete specification then being treated as a different application than the provisional specification. In some instances, the specification and drawing of the foreign application may have been filed at a date subsequent to the filing of the petition in the foreign country. Even though the petition is called the application and the filing date of this petition is the filing date of the application in a particular country, the date accorded here is the date on which the specification and drawing were filed.

A nonprovisional application may be found entitled to the filing date of the foreign application with respect to some claims and not with respect to others. In addition, an applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims.

216.01 Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent [R-07.2022]

35 u.s.c. 119  benefit of earlier filing date; right of priority..

• (1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
• (2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7) , to accept an unintentionally delayed claim under this section.
• (3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.

37 CFR 1.55 Claim for foreign priority.

• (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) , 365(a) or (b) , or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h) , (i) , or (j) of this section applies;
• (3) The petition fee as set forth in § 1.17(m) ; and
• (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
• (1) Application under 35 U.S.C. 111(a) . A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
• (2) Application under 35 U.S.C. 371 . A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371 . If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a) ), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
• (3) If a certified copy of the foreign application is not filed within the time period specified [in] paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371 , and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) .
• (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323 .

The failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 , provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application.

Except in certain situations, a certificate of correction can generally be used to perfect a claim to foreign priority where a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is filed with a request for a certificate of correction in an issued patent. See MPEP § 214.02 for a discussion of the requirements for the petition. In situations where further examination would be required, the petition should not be granted. For example, further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.

Effective May 13, 2015, 37 CFR 1.55(g) provides that the claim for priority and the certified copy of the foreign application must be filed within the pendency of the application, unless filed with a petition under 37 CFR 1.55(e) , (f) , or (g) as appropriate. 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority. Specifically,

• (A) Where the priority claim required under 37 CFR 1.55 was timely filed in the application but was not included on the patent because the requirement under 37 CFR 1.55 for a certified copy was not satisfied, the patent may be corrected to include the priority claim via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 , accompanied by a grantable petition under 37 CFR 1.55(f) or, in the case of a design application, a grantable petition under 37 CFR 1.55(g) . In this situation, a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim is not needed. A grantable petition under 37 CFR 1.55(f) or (g) must include the fee set forth in 37 CFR 1.17(g) and a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application; and
• (B) Where a priority claim under 37 CFR 1.55 was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application) in situations where the correction sought would not require further examination.

37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application. Thus, applicant may request a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 where the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application and where the priority claim was timely made in the application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) and the certified copy of the foreign application was timely filed in the parent application.

As an example of when a request to issue a certificate of correction may be used in order to perfect a claim to foreign priority benefits, see In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975). In In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a) - (d) or (f) had been satisfied. Accordingly, the Commissioner held that the “applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.”

Although In re Van Esdonk involved the patent of a continuation application filed under former 37 CFR 1.60 , it is proper to apply the holding of that case in similar factual circumstances to any patented application having benefits under 35 U.S.C. 120 . This is primarily because a claim to foreign priority benefits in a continuing application, where the claim has been perfected in the parent application, constitutes in essence a mere affirmation of the applicant’s previously expressed desire to receive benefits under 35 U.S.C. 119(a) - (d) or (f) for subject matter common to the foreign, parent, and continuing applications.

In summary, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patent if (1) the requirements of 35 U.S.C. 119(a) - (d) or (f) had been satisfied in the patented application or in a parent application prior to issuance of the patent, (2) the requirements of 37 CFR 1.55 are met, and (3) the correction sought would not require further examination.

As an alternative to requesting a certificate of correction, a claim to foreign priority benefits can be perfected by way of a reissue application in accordance with the rationale set forth in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). In circumstances where a claim to foreign priority benefits cannot be perfected via a certificate of correction because the requirements of 35 U.S.C. 119(a) - (d) or (f) had not been satisfied in the patented application, or its parent, prior to issuance, and the requirements of 37 CFR 1.55 are not met, or where the correction sought would require further examination (e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA) the claim to foreign priority benefits can be perfected only by way of a reissue application. Note that 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application.

• 201.01-National Applications
• 201.02-General Terms Used to Describe Applications
• 201.03-[Reserved]
• 201.04-Provisional Application
• 201.05-Reissue Application
• 201.06(a)-Former 37 CFR 1.60 Divisional Continuation Procedure
• 201.06(b)-Former 37 CFR 1.62 File Wrapper Continuing Procedure
• 201.06(c)-37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure
• 201.06(d)-37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
• 201.07-Continuation Application
• 201.08-Continuation-in-Part Application
• 202-Cross-Noting
• 203.02-Rejected
• 203.03-Amended
• 203.04-Allowed or in Issue
• 203.05-Abandoned
• 203.06-Incomplete
• 203.07-[Reserved]
• 203.08(a)-Congressional and Other Official Inquiries
• 204‑209-[Reserved]
• 210-Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
• 211.01(a)-Claiming the Benefit of a Provisional Application
• 211.01(b)-Claiming the Benefit of a Nonprovisional Application
• 211.01(c)-Claiming the Benefit of an International Application Designating the United States
• 211.01(d)-Claiming the Benefit of an International Design Application Designating the United States
• 211.02(a)-Correcting or Adding a Benefit Claim After Filing
• 211.03-Time Period for Making a Claim for Benefit Under 37 CFR 1.78
• 211.04-Delayed Benefit Claims
• 211.05-Sufficiency of Disclosure in Prior-Filed Application
• 212-[Reserved]
• 213.01-Recognized Countries and Regional Patent Offices of Foreign Filing
• 213.02-Formal Requirements Relating to Foreign Priority Application
• 213.03-Time for Filing U.S. Nonprovisional Application
• 213.04-Requirement to File Priority Claim and Certified Copy During Pendency of Application
• 213.05-Right of Priority Based Upon an Application for an Inventor’s Certificate
• 213.06-Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371)
• 213.07-Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application
• 214.01-Time for Filing Priority Claim
• 214.02-Unintentionally Delayed Priority Claims
• 214.03-Office Acknowledgement of Priority Claims
• 214.04-Proper Identification of Priority Application in Foreign Priority Claim
• 215.01-Electronic Priority Document Exchange
• 215.02(a)-Timeliness Requirement – Met By Priority Document Exchange
• 215.02(b)-Timeliness Requirement – Met By Interim Copy of Foreign Application
• 215.03-Time For Filing Certified Copy – Application Filed Before March 16, 2013
• 216.01-Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent
• 217-Incorporation by Reference Under 37 CFR 1.57(b)

• 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

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