Patenting priority right

An applicant for a patent in one country receives the benefit of his original filing date for any subsequent application for that invention, filed in another country within 1 year (this is the priority clause - Priority Right). 

Under European law and under the law of most countries in the world, except the United States, a disclosure of an invention by the inventor before an application is filed (first application allowing to the Priority Right) will destroy novelty, i.e. patentability. 

The procedure for obtaining a patent is typically started by filing a national patent application in a patent office of a country which is party to the Paris Convention (an international treaty agreeing certain reciprocal patent rights). This application can provide a so-called priority date for the invention disclosed in this priority application such that the patentability of the invention is assessed as of that date. This priority date can given to further patent applications filed in other Paris Convention territories provided that these further patent applications are filed within 12 months of the first priority application. A patent application must be filed before any public disclosure of the invention since, in most territories, public disclosures before the priority date can be used to attack the novelty and non-obviousness of an invention described in a patent application. 

From time to time, different persons invent the same subject matter and intend to protect it by patent rights. In these cases, two or more patent applications are filed by the inventors claiming substantially the same invention. Most countries in the world apply the first-to-file principle to determine who is entitled to the patent. In contrast, the United States do not give priority in case of conflict to the first applicant, but to the first to invent. Interference proceedings are instituted to determine who is the first inventor and consequently entitled to the patent (see 35 U.S.C. 102 g (1)). The parties involved in such a proceeding may provide evidence of facts to prove their date of invention. 

Keep good records of what you make, how you make it and how you use, install and deliver it. But secret use in the USA gives you no priority over a later US patent. Elsewhere actual local use may create a right to continue to work . 

The "Doctrine of Equivalents" applies to the interpretation of claims to establish infringement of existing patent rights in those cases where there is no literal infringement. Anything that comes under the definition of equivalents would have been patentable at the priority date (and should be included in the claims). Thus the Doctrine cannot be used as an argument to negotiate broader claims for a patent at the time of application or prosecution (Kushan, 1992). 

Alternatively, if the invention and its commercial potential are not fully understood, the applicant could abandon or abandon and refile. This process carries with it the danger that someone else may have filed a patent application between applicant s priority date and the second priority date obtained through the refiling process. When this occurs, the applicant loses the rights to the invention in most countries. This can be especially dangerous in highly competitive areas in which many people are conducting research. 

Even after the 12 month priority period has passed, the applicant may still file patent applications, provided there has been no publication or public use of his invention. Applications filed in most countries including the EPO and PCT are published 18 months after the priority date. The United States will begin publishing applications filed on or after November 29, 2000. If the application has not been published and the applicant has not published in any scientific journals, he or she can still file in a country and obtain a patent. This is called a non-convention filing because the applicant does not claim rights back to his first priority date. Therefore, if new information about the commercial potential of the invention becomes available between the 12th and 18th months, one should always review it carefully and decide whether nonconvention applications should be filed. 

International Phase The PCT filing results in an International Search and the issuance of an International Search Report, a Written Opinion (which comments on the three aspects of patentability (novelty, obviousness and utility) as they apply to the claims, and possibly comments on other matters as well), and an International Preliminary Examination Report (IPER). WIPO will also publish the patent application 18 months after the priority date. The designation WO... in the upper right hand of what many call a patent actually indicates that the document is only a published PCT patent application, not a patent. The PCT patent application is itself never prosecuted to allowance. The filing allows an applicant to defer further action (and... 

The aim of the PCT system is to consolidate and streamline patenting procedures. A PCT application reserves the right to file patent applications in all of the member states at a future date. It gives the applicant more time to submit patent applications to national ofhces than is allotted under national patent systems. This additional period of time (up to 42 months depending on the residence of the applicant and whether a priority hling has been made) gives an applicant more time to decide where to continue with national patent applications. The PCT process also provides the applicant with valuable information about the potential patentability of the invention through an international search report and the optional international preliminary examination report. 

On 9 September 1958, ffie US Patent Office declared interference (a procedure carried out by US Patent law according to which the Board of Patent Appeals in the US Patent Office determines the priority of two or more inventions of identical or similar claim content with time overlap) between these five parties. Neither the parties nor the US Patent Office had considered including Karl Ziegler s patent rights in this proceeding. 

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