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January 24, 2018

Comments

Living outside the USA, over the years I've observed various examples of the myopia from which many US practitioners suffer. The difference between US benefit claim practice and Paris Convention priority claim practice is one example. Broad and its attorneys just learned this differnce the hard way.

Kevin:
You say " In the U.S., provisional applications are filed in the name of the inventor".
That was true some time in the past, but provisional applications may now be filed in the name of an assignee. See the first sentence of 35 USC 118: "A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent."
Had the provisionals been filed in the name of the assignees, I expect that the result would have been different.

https://en.wikipedia.org/wiki/Priority_right

Paris, PCT, EPC, all use the wording "successor in title". Kevin, above you write "successor in interest". Do you see a difference between "title" and "interest"? Was your choice to write "interest" deliberate? Does it matter?

As I understand it, the all-important first two pro filings were before the AIA. Does that make a difference, when it comes to filing them in the name of a bunch of assignees instead of a bunch of inventors?

Correct Derek - for clarity I think I’ll revise to say “the U.S. provisionals were filed . . .”.

Thanks for the comment

Well, Max, I'd have to go back and review but maybe it's just the American in me (after all, we say "right, title, and interest" in our assignment documents, covering all bases and haling back to medieval England where Latin, English, and French words were used for certainty).

I'm not sure it matters. And while it is now possible to file in the name of the applicant post-AIA (and I understand the Broad's arguments that the OD was wrong), in this case it will depend on how the Board of Appeal rules. As always, stayed tuned.

Thanks for the perspective.

The comments to this entry are closed.

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