Kristina Cornish, Kilburn & Strode LLP
Background
This is a case held before the UK Patents Court and decided in June 2009. The matter in hand was the infringement and validity of the UK national phase of European Patent 1255510. The issues included added matter, novelty, inventive step and insufficiency. The matter turned on the validity of the priority claim.
Details of the Priority Issue
The European patent was derived from a PCT application filed on 31 January 2001. A priority date of 31 January 2000 was claimed, from a US application (the “priority application”).
The PCT application was filed in the name of Cook Biotech Inc. (“Cook”). The US priority application was filed in the name of three individuals as joint inventors. One (and only one) of these inventors was an employee of Cook when the invention was made. The rights in the invention from the two inventors not employed by Cook were assigned to Cook around 21 months after the PCT application was filed (but before the patent was granted).
The Arguments on Priority
Edwards Lifesciences AG (“Edwards”) argued that Cook’s priority claim was not valid since Cook did not own the rights in the invention (made by at least two of the inventors), when the PCT application was filed and the priority claim was made (i.e. they had no entitlement to claim priority at the date that they did so). Cook argued that the relevant issue was that by the grant date of the European patent, all rights had been assigned to Cook and thus Cook was entitled not only to be granted the patent, but also a valid priority claim.
The Judgement
The Judge (Mr Justice Kitchin) referred to Sections 5 and 7 of the UK Patents Act (the “Act”) (priority and entitlement to be granted a patent), Section 130(7) of the Act (harmonising these sections with the Article 87 EPC and Article 8 PCT) as well as Article 4 of the Paris Convention.
The conclusion of the Judge was that under the provisions of the Paris Convention (and corresponding provisions of the Act, the EPC and the PCT) an Applicant must be entitled to claim priority at the time that they do so. It is not enough to subsequently acquire title to the invention. The Judge stated in the Judgement that he derived “a measure of comfort” from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of the priority provision in J 0019/87 and T 0062/05.
The Result
In the light of the Judge’s decision that the priority claim was invalid the “Pavenik” document became citable art and claims 1, 15, 22 and 31 were found to lack inventive step over it.
Lessons to Learn
This case sets the UK standard in clarifying that an applicant claiming a right of priority must be entitled to do so at the date that the priority claim is made. Any claim to priority made by a party not entitled to do so may contribute to the invalidity of the patent.
It is therefore essential to check that any assignment document which is needed to transfer the rights in a priority application or to assign the right to claim priority is dated before the Applicant company makes a priority claim.
The Judgement can be found at http://www.bailii.org/ew/cases/EWHC/Patents/2009/1304.html