Failing to seek partial priority in patent applications – failing on creating return on inhouse innovation

Let´s get technical with (partial) priorities. The novelty criteria are one of a patent’s most fragile “Achilles-heel” in court. To be granted patent protection, the applicant needs to illustrate that the invention is industrial applicable, non-obvious and new.

Thereforeit is possible for parties to invalid patent rights by showing evidence of prior identical or similar solutions the examination by the patent office did not identify. So far – Business as usual. However, in the case when an applicant´s prior patent application constitutes a novel technology document – That´s when teeth starts to squeak.

The case

That is exactly what happened in case T 1001/26 published January 2018 by the European Patent Office board of appeals regarding a European patent application. The applicant had claimed priority to a previous US application when filing the European application. However, the opponent argued that the invention was in fact disclosed in an even earlier patent application that the applicant had filed for.

The board had the difficult task to examine however the invention disclosed in the new patent application in fact was comprised in the previous patent application. The board said that the invention was revealed even though not directly but included in the non-obvious analysis.

The Question is whether the person skilled in the art could derive the subject-matter of the claim of the patent directly and unambiguously, using common general knowledge from the earlier previous application (Page 8 the decision by the board of appeal).

The conclusion

The board found that the invention was disclosed partly in the earlier patent application and the patent application which the applicant had sought priority from. Therefore, the applicant should have sought priority from BOTH patents in order to take advantage from the priority right. The EU application was held invalid.

The effect

The board clarified once again that the right to priority must be held by the applicant AND claimed when filing the patent seeking priority. In this case, the applicant should have claimed partial priority from its previous patent applications. This means that if you fail to claim priority – you lose the right to claim priority – Even if the novel patent application is in fact, in your possession as an applicant!

This ”small” priority detail might jeopardize your entire innovation process, why the lesson should be:

Keep track of your invention´s developing phases and its connection to your patent applications.

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