India: Safely Claiming Priority From A Patent-Application Filed By Different-Applicant

Last Updated: 16 March 2018
Article by Rahul Sharma

A right to claim priority from an as-filed application is not just restricted to an applicant of the Priority application, but may be also availed by 'another/different' applicant for the purposes of filing a later application claiming priority from the priority application. Not only such other 'applicant' of the later-application may be different from the original priority-setting application, the later-filed application may be either equivalent to the priority application or a 'variant' (e.g. improvement or modification) thereof.

There may be a number of illustrations quoting the afore-described scenario:

  1. An applicant (say party A) upon having filed a priority application (say application A) in country A assigns the application to party B. Party B thereafter files a convention application in other country, say country C (signatory to Paris Convention). In addition or alternatively, party B may also file a PCT application based on application A.
  2. An applicant (say party A) upon having filed a provisional-specification (say application A) assigns the application to another party B. Party B thereafter files a complete specification in continuation to said provisional application in their own name.
  3. An applicant (say party A) upon having filed a complete-specification (say application A) assigns the application to another party B. Party B thereafter converts that application A into provisional application and later on files a complete specification in continuation to said provisional application in their own name.

The assignment of patent application in aforesaid scenarios, inter alia, transfers "right to priority" from one entity to another entity. In other words, a second entity or another entity becomes entitled to the priority right of the first entity. However, enough safeguards need to be adopted as not every type of assignment of patent applications/inventions or equivalents adopted in general course is able to entitle the second entity with the priority benefit of the earlier application filed by first entity.

One of the foremost safeguard is that assignment of the patent application shall take place any time before the filing of the "later application" and within the priority-period, i.e. during the continuance of 12 month period. This may be attributed to the fact many patent-jurisdictions may not entertain assignments having a retrospective-effect in such a scenario. For example, assignments of the priority application from one entity to another dated after the expiry of 12 month duration and after the filing-date of the later application may fall short of entitling the other entity the priority-benefit. Regard may be had to ruling in European Patent Office, Technical Board of Appeal 3.2.05, T 577/11, dated April 14, 2016, wherein the assignment dated after the expiry of the priority-period and after the filing of the later application by the another entity was rejected and the another entity was disentitled from claiming the priority benefit of the earlier-filed priority application, while otherwise getting a right to be granted patent by virtue of assignment.

Usage of employment contracts is known to indicate assignment of invention from employee-inventors to employers. Accordingly, in case of a single employee inventor filing the priority-application as the patent applicant, the employer is probable to stand indisputably entitled by virtue of employment-contract only to file the later application claiming priority from the earlier application and no additional formalities may be required. However, in case of multiple employee-inventors, the employment-contracts may differ from one employee to another and not every employment-contract may be able to explicitly assign the invention from employee-inventor to the employee. In such scenarios, mere presence of employment-contract may not validly entitle an employer to file a later application claiming priority from an earlier application 'filed' by the employees as co-applicants.

Accordingly, in case multiple employee-inventors have jointly filed the priority-application as co-applicants, it is recommended to additionally obtain a confirmatory assignment of invention from the inventors to the employer in order to confirm at least the assignment of right to priority, preferably before the filing of the later application. Alternatively, the employment contract provisions may be worded to explicitly indicate that any right (rights to claim priority from priority application, and the right to be granted patent in respect of the later-filed invention) availed by the employee inventors in respect of the priority application automatically stands transferred to the employer(s).

Further, yet another way of entitling the priority benefit of earlier application to another applicant is inclusion of an additional applicant as a co-applicant, during the time of filing of the later application claiming priority from the earlier application. As may be understood, such other applicant does not have any rights in the priority application. However, such other applicant would have contributed patentable subject matter to the later- application, or derives title from a person who has contributed patentable subject matter. Such act of additional person or entity being made a co-applicant of the later application by the consent of the applicant of the priority application entitles the additional person or entity the priority benefit of the earlier filed application.

Similar to immediately foregoing scenario of additional applicant, another scenario may be where the later-application is contemplated to be filed in the name of only one of the co-applicants or fewer co-applicants as compared to the number of co-applicants of the priority-application. As may be understood, a valid assignment of share is required in favour of the one or more co-applicants associated with the later application from each of the co—applicants of the priority application within 12 months. However, like the immediately foregoing scenario, the priority-entitlement in the present scenario may still be availed by at least obtaining consent from the concerned co-applicants in the priority application desirous of transferring the share. The formal assignment of share in such scenario may be recorded at the patent office after the filing of later application.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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