Recently I sent out the following news item, and got back some nice
responses from people, which I have appended below. Apparently it caused
a few Transatlantic phonecalls, though if I have the power to cause such
phone calls, I would prefer that the subject be how the PTO and EPO will
coordinate putting the full text of their patent databases onto the
Internet :-)
I assume at some point someone official will release an announcement
clarifying this policy. If they send a copy to me, I will send it out to
you all.
Greg Aharonian
Internet Patent News Service
====================
WHAT I SENT OUT ===>
Recently a reader sent me the following rumor, which I hadn't heard
about. Anyone know if it is true or what it means?
>I recently learned through last week's AIPLA meeting that an attorney in
>DG-5 (I do not know what DG-5 is) of the European Commission has issued
>an opinion that US provisional patent applications do NOT qualify as
>applications from which a claim of priority under the Paris Convention can
>be made.
>
>The reasoning for this ruling is that a provisional application can never
>mature into a patent and therefore it is not an "application for a patent".
>
>Please note that it is my understanding that DG-5 does NOT have authority
>over the EPO so I am not sure what effect this ruling has.
====================
THE RESPONSES I RECEIVED ===>
Greg,
I have received some comments on your PATNEWS item on U.S. Provisional
Patent Applications and the EPO.
The potential problem with US provisionals is simply the fact
that, as our British Associate understands the law, a patent
cannot be granted 'on a provisional application' and an inventor
must file a new application claiming priority from the provisional
in order to pusue his protection to grant. This limitation of
U.S. Provisionals has the potential to cause a problem with
Article 4 of the Paris Convention as well as Article 87 of EPC.
Both treaties refer to the right to claim priority from an
application for (the grant of) a patent (or similar wording).
However, a Paris Convention Country's Patent Office or the EPO may
rule that a US provisional is 'the equivalent of a regularly filed
application'. This may be reinforced by the regulations which
permit the conversion of a provisional application into a regular
application (but what about the potential for new matter in the
claims???). While the claiming of priority may be decided by the
national and regional patent authorities, there is still the
potential attack on a priority document in the courts.
Our British Associate has spoken to the Legal Division at the EPO and
they are aware of the problem (According to our Associate, Commissioner
Lehman has been 'on the phone' over your Internet article). They expect
to be able to issue an advice by the end of the month.
I will pass on any further information as it develops.
Kevin Erdman
====================
>The reasoning for this ruling is that a provisional application can never
>mature into a patent and therefore it is not an "application for a patent".
Paris Convention (Stockholm text) says clearly:
Article 4
A (1) A person ...
(2) Any filing that is equivalent to a regular national filing under
the domestic legislation of any country of the Union or under
bilateral or multilateral treaties concluded between countries of
the Union shall be recognized as giving rise to a right of priority.
(3) By regular national filing is meant any filing that is adequate
to establish the date on which the application was filed in the
country concerned, whatever may be the subsequent of the
application.
>Please note that it is my understanding that DG-5 does NOT have authority
>over the EPO so I am not sure what effect this ruling has.
You have it right. DG-5 (Directorate General number 5 of European Community)
does not have any authority over European Patent Organization.
Pekka Valkonen
====================
I am forwarding to you a note that Scott Garrison posted on the CompuServe
Forum on Ideas, etc. --Gerry Elman
I apologize because I did not know who sent the message, therefore it is
written to whomever it may concern.
I attended the PCT committee at AIPLA last week. The rumor you have heard is
true. Busso Bartels (sp?) President of WIPO discussed this very issue with th
e
other members of the committee. The consensus was that because a provisional i
s
not an application for a patent and doesn't automatically mature into a patent
,
the filing date of the provisional might not qualify as a priority date in a
subsequent PCT application. At that point in time there was no word of ANY
decision by the International Court as to this matter. However, people did
mention that Great Britain formerly had some sort of "invention application"
that could not be used as a priority date. (I know nothing of what this was
called, nor do I know anything about this GB application - I mention it only
because it was used as a reference in the meeting.)
Scott Garrison
====================
I am forwarding to you a note that Hedley Austin posted on the Ideas Forum on
CompuServe in response to one of your reports. --Gerry Elman
<<I am checking with EPO on the suggestion that a US provisional will not
<<qualify as a priority application under the Paris Convention.
Meanwhile, Scott Garrison referred to similar provisional applications in
Britain; however, the UK provisional applications could be "completed", with
addition of further material, if necessary. When completed, the application
would retain the same application number, which could therefore mature to a
granted patent. The UK situation is therefore NOT directly parallel to the
US situation.
Hedley Austin
====================
Greg,
The following should clarify the situation. With proper acknowledgement to
my friends and colleagues at Beetz & Partner in Munich, there is no reason
for panic "at the moment."
The GD-5 is a division of the European Patent Office (EPO) dealing with
international legal affairs. This division is at present checking if the
provisional application fullfills the requirements for being a priority
application. The main concern of the EPO is the fact that the provisional
application will automatically go abandoned one year after filing so that the
question was raised that it might not represent a "real application" within
the sense of the Paris Convention.
However, the EPO is only checking the legal situation right now (also with
respect to the national laws of the member countries) and there is no decision
thereon made yet. At present provisional applications can form a basis for
European patent applications. If anything will change the EPO has to publish
a respective notice in its official journal a sufficient time in advance.
Best regards,
Alex Butler
====================
Greg:
This will mislead readers who are not patent professionals.
It is sure that US provisional applications can serve as a basis
of priority claims under the Paris Convention. There is no
question. Language of Article 4A(3) of the Paris Convention,
Stockholm revision is quite clear. Any applications for patent
and utility model will be eligible for Convention priority claims, if
filing dates are established under the domestic law of that country
of the Paris Union. Note that almost all industrialized countries
are bound by the Stockholm revision of the Paris Convention.
The USPTO will grants filing dates to provisional applications
under 35 USC, if the provisional applications for PATENT meet
that code. Therefore, the applicants or inventors can claim
Convention priority from the US provisional applications in
other countries of the Paris Union.
Also, previously the United Kingdom accepted provisional applications.
I believe that member countries of the Paris Union had accepted Convention
priority claims from UK provisional applications.
The European Patent Convention, I believe, allows applicants to claim
priority from applications filed in any member country of the Paris Union.
Summing up, the EPO cannot refuse priority claims from US provisional
applications.
Regards,
Shuji Sumi
====================
DG V is the Directorate General of the EEC for legal matters. Your
reader's understanding is correct - it has absolutely no jurisdiction over
the EPO, and the comments (assuming they have been reported correctly) made
by the DG V official therefore have no more weight than if you or I had
opined them. Nonetheless, it strikes me that they are worth serious
examination!
Professor Charles Oppenheim
University of Strathclyde