Paris Convention traps for patentees: the hidden dangers of claiming priority from refiled applications

Paris Convention traps for patentees: the hidden dangers of claiming priority from refiled applications

Paris Convention traps for patentees: the hidden dangers of claiming priority from refiled applications

Michael Caine, a partner of Davies Collison Cave, recently conducted a study on behalf of FICPI in relation to the operation of Article 4C(4) of the Paris Convention for the Protection of Industrial Property. Signed in 1883 and now with over 170 State parties, the Paris Convention is one of the oldest international agreements on the protection of intellectual property.

Aims of the study

Article 4 of the Convention provides patent applicants with the important right to to claim a priority right in one country based on a first patent application filed in another, for a fixed 12 month period. The aim of this study was to identify traps for applicants seeking to re-set this 12 month priority period provided for in Article 4C(1) of the Paris Convention by invoking the procedure set out in Article 4C(4).

Read the full report

The full report and results of the study can be viewed on the FICPI website among the ExCo papers for the Cape Town meeting.
Read the full report »

Methodology and focus

The study recognises that Article 4C(4) already contains several restrictions which limit the ability of an applicant to re-set the 12 month priority period based on a re-filed or updated application, and therefore focuses on the manner in which different countries or regions have implemented the provisions of Article 4C(4) and, in particular, where such implementation has departed from the specific provisions of Article 4C(4). These differences were analysed by Michael to identify any potential traps for foreign applicants claiming priority from re-filed applications. The study, which looked at 28 different countries and regions, also sought to identify any other country-specific requirements that have the potential to cause difficulties for applicants when making a priority claim.

This study followed earlier work carried out by Michael through his position on the Council of the Institute of Patent & Trade mark Attorneys of Australia to remove a trap for foreign applicants which currently exists under Australian patent legislation for applicants claiming priority from refiled priority applications.

Summary of key findings

  • It appears that the most significant traps for foreign applicants exist in Australia and India, although the Canadian provisions could cause difficulties for some applicants.
  • The slight differences in the way Article 4C(4) has been implemented in New Zealand, Portugal, Singapore, South Africa and the United Kingdom are unlikely to cause difficulties for applicants, and are more likely to provide an opportunity to claim priority in those countries where priority claims are not available in countries which have implemented provisions corresponding exactly to those of Article 4C(4).
  • The provisions in the United States appear to be more lenient than those provided for in Article 4C(4), although it is unlikely that foreign applicants will remember to notify their US attorneys of foreign applications filed prior to the earliest priority claimed in the United States. Although the failure to provide this information results in contravention of one of the rules for perfecting a priority claim, it is far from certain that the failure to provide this information will result in a waiver of the priority claimed.
  • The problem which may arise in the United States where inventors named in the priority application differ from those named in the United States application is more likely to cause difficulties for foreign applicants.