Warning about priorities and fulfilling the correct formalities in time Stefano John NAIP Education & Training Group / European Patent Attorney
As is well known, European and US practice view patent application ownership differently. This can create an issue for employer-employee inventions.
In Europe, the applicant is assumed to be entitled by simply applying the application. The EPO does not deal with entitlement or ownership issues directly, but most national laws do dictate for such situations. In the classic case of the employee-employer, the employer can nominate himself as the starting applicant, as long as it is allowed by the national law of the country in which the invention was created. The inventors have to be also nominated and recognized as such, but only for the moral right of being recognized as the inventor.
In the USA, the inventor has to be nominated as first applicant, which means that it is the one or more inventor employee. Classically, in the US, the employer-employee relationship is sorted by having an assignment. “Shop-right” doctrine within US patent law is one way in which the employee in practice is often incentivized to assign his rights over to the employer.
The issue can be very serious for successive European applications that derive from a US priority application (be it provisional/non-provisional). To validly claim a priority in Europe from the US application, all of the applicants present in the original US application, or their successor in title, have to be present in the successive European application. This is firmly established within the EPC procedures (for example Art 87 EPC and decision J19/87). Please note that if this is not the case, the priority is not valid and therefore any intervening prior art would invalidate the patent application. This generally would mean loss of entire patent right!
Hence it is important to have the right to priority deriving from a US application sorted before entering the European national phase. The best way to do this is to have the inventor employees (and therefore applicants in the priority US application) assign their rights to priority (and probably all other) over to the employer. Then the employer can have a EP application filed in his own name. However this must be done on behalf of all inventor employees and done before the filing date of the relevant EP application - otherwise it’s invalid. This is the best solution because it does not allow employers complete control over their invention in Europe even though the US priority, due to US Law, requires them to file in name of the inventor.
However getting such assignment recorded within such a deadline (end of priority year/before EP filing) is not always possible. The alternative is to then file a EP application, claiming priority from the US application and adding the employer as co-applicant. The removal of employee inventors can then be solved by the assignment, even after the priority date, while allowing some control of the application in the hands of the employer. It is not ideal, especially as it leads to a situation of co-applicants in patent rights which can be complicated to manage as we have described before, but it is better than losing the application outright due to intervening prior art and loss of right to priority!
Author:
Stefano John, European Patent Attorney
Experiences:
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO