priority A87 and transfer of rights

[Daniel]

According to A87, any person who has duly filed an application for a patent shall enjoy a right of priority during a period of twelve months.

Visser explains that two different rights exist - one right to the grant of a patent and a different right to claim priority. He states: the filing of a first application ...creates for the applicant two distinguishable rights. The first one is the right to the grant of a patent... The second one is the right to claim priority from this application in a subsequent application... The applicant may transfer the right of priority to a successor in title, independently of the right to the grant of the patent. Such a transfer must habe been effected before filing of a subsequent application by the successor in title."

A number of questions arises from these statements. Let´s say A has filed patent application EP-A and B wants to file patent application EP-B and claim priority from EP-A. (Of course all other conditions are fulfilled, i.e. 12 months period etc.)

Can A transfer a right to claim priority from EP-A to B without transferring EP-A (i.e. A continues to be applicant for EP-A)?
Would this situation be different if the first or second application is a national application in a member state of the Paris Convention?

To make the situation even more confusing, Visser states then later "if a subsequent application in or for a state claims priority of a first application, the right of priority pertaining to the first application for that state and the same subject-matter should not be transferred to another person without the right to the subsequent application to avoid loss of priority for the subsequent application."

Referring back to the example above: If A has transferred the right to claim priority to B before the point in time when B filed EP-B then B should have a valid priority claim (presuming that the other conditions for priority are fulfilled). Could a later transfer of the right to claim priority or ofapplication EP-A to company C change the validity of the priority claim?

I have not found any G-case about this subject, and also the Case law book is rather silent on this topic.

[djackson]

I do not know what Visser has to say so cannot comment on the specific text.

Nevertheless, I think it is potentially confusing to refer to the right to grant and the right to priority as being separate, but there is some basis for this in GL A-III, 6.1.

Perhaps it is simpler to consider a patent application as a piece of property - the owner of that property has the right to do different things with different parts.

So, if I have filed a first application, say EP-A, than if I want the EP application, but not an equivalent application in, say, Japan, then I can transfer that right to B. I do not want to transfer EP-A as a whole and there is no existing Japanese application to transfer, so all I can transfer is the right to claim priority from EP-A and I must do that before the Japanese application is filed by B.

there appears to be less justification in transferring the right to priority if I do not want to pursue EP-A and I want to transfer that right to B, but this could depend on the individual facts. It would be necessary to consider which rights are being transferred and which are being left behind. This applies to all transfers.

The answer to your last question is "yes" under certain conditions - in particular if the first transfer has not been recorded with the relevant authority. Section 33 of the UK Patents Act 1977 reads (in part):

"Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction ... shall be entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction ... if, at the time of the later transaction ... the earlier transaction ... was not registered ..."

I hope this helps.

[Daniel]

Great, thank you for the clarification.