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Monday, 28 June 2010

Does a "reverse-Edwards" strangle priority?

The title of this item might seem a little curious, but not to any patent-hounds who have been sniffing at the Kat's recent posts here and here. The following is a little piece by the IPKat's valued friend and colleague, European patent attorney Kevin Cordina (Olswang LLP), who writes:

"In Edwards Lifesciences AG v Cook Biotech Incorporated a US priority application was filed in the name of three inventors, with the rights from one of those inventors passing to Cook. Subsequently a PCT application was filed by Cook alone, and the Court was asked to decide whether Cook was entitled to claim priority. Kitchin J found here that Cook was not entitled because the "person" referred to by the Paris Convention is a reference to all three applicants together, and Cook alone (or the inventor from which they acquired their rights) had not duly filed an application within the meaning of Article 4A(1) of the Paris Convention. That is, the priority right lay with the three inventors (or their successors in title) jointly, and not separately. The judgement from the Court of Appeal in this case has just been issued, but they did not consider the priority-related parts of the judgement as they found the patent obvious regardless of the actual priority date.

The obvious question then arises - what about a "reverse-Edwards" situation? If a priority application is filed by one party, can a subsequent application in the name of that party, and at least one other party, validly claim priority from it? We now have the answer to this question in the form of KCI Licensing v Smith and Nephew Inc, a judgment recently handed down by Arnold J (here, noted by the IPKat here).

In this case a US provisional application was filed in the name of the inventor, with KCI being the successor in title. Arnold J had to consider two scenarios with regard to the applicant for the subsequently filed PCT application; either KCI alone was the applicant, or KCI and a second party, Mediscus, were applicant. The first of these is uncontentious, but the second is the reverse-Edwards situation in which there are more applicants for the later application than are entitled to the priority application.

Both parties accepted that there can be an assignment of priority rights before filing the later application, which would permit the later filing in joint names with a valid priority claim. There was no evidence of any assignment in this case, but KCI Licensing argued that KCI had agreed by its conduct in naming both parties as applicants to transfer part of its entitlement to the invention to Mediscus and that this was sufficient to make Mediscus a successor in title for the purposes of claiming priority. Arnold J accepted this submission and therefore found that a PCT application in the name of KCI & Mediscus was entitled to claim priority from an application to which only KCI were entitled.

The combination of Edwards and KCI Licensing seems to wrap up most combinations of priority claim challenges related to applicants and entitlement. We now know that it is the filing date of the later application that is definitive for determining entitlement, and that this cannot be fixed later, that all parties that own the invention of a priority application at the date of filing a later application must be named as applicants on that later application, and that a later application can include more applicants than are owners of the priority application at the filing date of the later application".
This seems a helpful and tidy summary of the position. Thanks, Kevin, for taking the trouble to write in.

An entirely different reverse Edwards here
Reverse Nelson here


Anonymous said...

This is also consistent with how the EPO interprets it too. See GL A-III 6.1 the case of joint applicants filing the later European patent application, it is sufficient if one of the applicants is the applicant or successor in title to the applicant of the previous application. There is no need for a special transfer of the priority right to the other applicant(s), since the later European application has been filed jointly. The same applies to the case where the previous application itself was filed by joint applicants, provided that all these applicants, or their successor(s) in title, are amongst the joint applicants of the later European patent application.

I don't know that an EPO BoA has actually ever considered this as such, though (?) The analogous situation for divisional applications was decided in J2/01 and the need for identity of applicants in a 4C(4) 'first application' situation was coonsidered in T788/05, that decision being based on the premise that the priority right belongs simultaneously and jointly to the joint applicants.

Anonymous said...

The extent to which Edwards v Cook went against generally understood UK practice is neatly highlighted by the current version of paragraph 5.19 of the UK Manual of Patent Practice ( which shows tracked changes from the previous version.

In particular, that paragraph contains this sentence:

It is not sufficient if the two applications have an applicant in common, which the word "not" is highlighted as it had to be inserted by the IPO to update the MOPP in response to Edwards v Cook...

I suppose the IPO will need to edit this paragraph further now.

Anonymous said...

a later application can include more applicants than are owners of the priority application at the filing date of the later application

I don't think this is right. As Kevin says, the priority claim was valid in this case because it was accepted that KCI's conduct in naming both parties as applicants showed it was their intention that Mediscus be transferred part of the right to claim priority - so at the filing date of the later application, Mediscus WERE an owner of the priority application. (Well, they had explicitly and intentionally been transferred the a right to claim priority from it, which is what matters.)

So for example, if Mediscus had filed the application naming both KCI and Mediscus as applicant, presumably the same inference about KCI's intention couldn't be made. Would the claim to priority be valid? Without some other indication of a transfer of priority rights from KCI to Mediscus, presumably the answer is "no" - otherwise why was KCI's conduct and intention relevant in the first situaton?

So, the actual result seems to be "a later application CAN'T include more applicants than are owners of the priority application at the filing date of the later application" - or so it seems to me, anyway.

Kevin Cordina said...

I see your point.

I think the statement is correct when it is caveated with 'provided there is a transfer of the right to claim priority to the second applicant (which may be implicit from the party's actions)'.

The important point is that an assignment of a priority right can be implicit in the actions of the parties, which will turn on the facts of each individual case.


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