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« iLife Technologies, Inc. v. Nintendo of America, Inc. (N.D. Tex. 2020) | Main | Meanwhile, Back at the Broad-CVC Interference . . . »

January 28, 2020


The severity with which the issue of entitlement to the priority date of an earlier patent application for the same invention is judged can be contrasted with how liberal the EPC is about who can file a patent application, namely "any person".

Those who wrote the EPC back in 1973 were well aware that issues of ownership could not always be resolved prior to filing. In FtF country, there is no time to lose, when getting a PTO filing date. So the EPC provides that although the patent must issue to the party entitled to the invention, it can be initially filed by some other party and then assigned during prosecution.

It is not as if the parties here found there patent revoked. It was just found not to be able to benefit from the earlier USPTO filing dates, whereby the prior art did the rest.

Presumably, the Paris Convention year ought to be long enough to resolve questions of ownership and get the necessary instruments of assignment executed. I mean, how often do patent attorneys file PCT applications without knowing who owns the subject matter of the invention?


I read with interest your comments here and note that your answer is NOT universally applicable. In particular, the 'debate' on the AI-related applications currently pivots on the fact that the applications have been rejected their spot (with a possibility of being determined later just who may or may not be listed as inventor) on the very front end 'technicality' of the formality (paperwork) related to identifying the inventor.

While certainly, the debate in regards to AI innovation has more extensive reach than mere formalities, it is worth noting that your comment here does NOT ring true. Not just "any party" that is accompanied by the sense of "no time to lose" that you speak of.

As the AI issue also points out, questions of ownership may well not be sufficient.


I've always felt there was more going on here, particularly in view of the proceedings between The Broad applicants and Rockefeller University in the U.S.

But you are correct, it was the lack of priority that did them in before the OD and then the TBoA.

Being an expert, can you confirm that I am correct that this is the end of the line for this dispute? And that there is no "higher authority" that can be beseeched?

Thanks for the comment.

In reply to Kevin's comment of 29 January, in principle the Broad can file a "petition for review", but only on procedural grounds. E.g. if the Technical Board did not give the Broad Institute a fair opportunity to present its case.

Kevin, I second Peter. Further though, it depends what you mean by "this dispute". Only the one patent has been revoked. The scope for prosecuting divisionals all the way to the end of the line is more or less endless, restricted only by the end of the 20 year patent term. You see, at the EPO there is no "Binding Precedent" and who is to say whether each divisional will end up before the same Board with the same three individual judges on the panel.

It seems unlikely that the loser can improve their evidence or arguments, enough to prevail next time around, but who knows. The money's there, I guess, for plenty more attempts to get "over the line".

Kind of you to dub me an expert. I'm hardly that. Still more of a student than an expert, I would say.

Peter and Max: thanks for the clarification, and for mentioning the lack of binding precedent in these appeals. It is a little curious to the American eye not to be able to rely on a decision from a court (or board) of appeals. But that's why we aren't the experts on this question.

Kevin, I give you a Link to the relevant posting on the IPKat blog, wherein you will find a Link to the K&S firm blog, wherein it is surmised that a petition to the Enlarged Board of Appeal (indeed on procedural issues) may yet prolong the present proceedings.

As to Binding Precedent, I had always supposed that it enhanced legal certainty. But comparing the decision flow over 40 years at the EPO Boards of Appeal with that at the CAFC, I think we now have more legal certainty in Europe on eligibility/patentability under the EPC than you do under 35 USC. Who doesn't?

Caveat: When the EBA pronounces, take that as pretty much "Binding Precedent". That's how the EPO's Technical Boards of Appeal look at it. So, in a sense, there is at the EPO after all something not far short of Binding Precedent.

Finally, MaxDrie admits to a point vis a vis Binding Precedent that prior he has steadfastly chosen not to see.

Will he choose to embrace the full extent of his admission?

I remain:

As to Precedent at the EPO, and the extent to which it is "binding", here is a Link to the IPKat blog in 2014:


MaxDrei quips:

"But comparing the decision flow over 40 years at the EPO Boards of Appeal with that at the CAFC, I think we now have more legal certainty in Europe on eligibility/patentability under the EPC than you do under 35 USC. Who doesn't?"

But this misses the reason why US jurisprudence is a mess. It is NOT a mess because of our Sovereign's application of Stare Decisis. It IS a mess because the 'top of our food chain' in the judicial branch have created a Gordian Knot (to which the CAFC merely adds more rope), and the Supreme Court has refused any and all chances to clean up their mess.

One should not mistake the different causes of the current shambles of patent eligibility jurisprudence in the US.

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