Inner priority

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Inner priority denotes the right of an applicant to the age of a previous domestic patent or utility model application for a later domestic patent or utility model application for the same invention .

prehistory

The starting point was Art. 4 A Paris Union Convention for the Protection of Industrial Property (PVÜ). According to paragraph 1 of this provision, "whoever has filed an application for an invention patent, utility model ... in one of the countries of the association in accordance with regulations, ... for filing in the other countries" (countries of the association of the Paris Convention) ... "has a right of priority ". This means that subsequent registrations in other association countries of the PVÜ are entitled to the age rank of the first registration submitted in one association country. According to the original legal situation, a right of priority for a German patent or utility model application could only be based on an initial foreign application. The right to a so-called internal priority from a patent or utility model application previously filed with the German Patent and Trademark Office (DPMA) for a later application relating to the same invention, also deposited with the DPMA, only became effective when the Community Patent Act came into force (January 1, 1981) (GPatG) (see Art. 8 and 10 there). The designation "internal priority" is intended to serve as a conceptual delimitation from the already applicable, above-mentioned right of priority under the Paris Convention (so-called Union priority), which is now also referred to as "external priority".

Sense and purpose

The inner priority takes into account the fact that often occurs in practice that an applicant has further developed his invention after the (German) first application and would like to obtain a (German) patent or utility model for the further developed invention. According to the legal situation up to the entry into force of the GPatG (see above), this was only possible in the case of an initial foreign registration, which was perceived as unsatisfactory by all.

Patent law

The legal basis for the internal priority in the context of patent law is Section 40 of the Patent Act (PatG). Paragraph 1 of the provision reads: "Within a period of twelve months after the filing date of an earlier patent or utility model application filed with the Patent Office, the applicant has a right of priority for filing the same invention for a patent, unless the earlier application already has a domestic or foreign priority has been claimed ".

The requirements in detail

(Later) patent application

The subsequent application must be a patent application in accordance with Section 40 (1) of the Patent Act. (With regard to a later application for a utility model, see the explanations below on utility model law.) The earlier application may, however, be a patent or utility model application.

Same invention

The subject of the later patent application must be the same invention as the earlier patent or utility model application . The standard for the scope of the internal priority is therefore the content of the first filing. However, this does not rule out the possibility that the original invention, as it was the subject of the initial application, has been further developed in the meantime. This is precisely what is usually the reason for the applicant to submit a later second application containing such further development features (see above). However, Section 40 (3) of the Patent Act stipulates that internal priority "can only be claimed for those features of the" later "application" that are clearly disclosed in the entirety of the earlier application ". It follows that the further development features of the invention contained in the second application are only entitled to the filing date of the subsequent second application as age rank.

Several previous registrations

According to Section 40 (2) of the Patent Act, the internal "priority of several patent or utility model applications filed with the patent office can be claimed" for the subsequent second application. A corresponding regulation is also contained in Art. 4 F Paris Convention and Art. 88 Para. 2 European Patent Convention (EPC), which in this respect also provide for the equalization of patent and utility model applications. This means that for the subsequent second application, the internal priority can also be derived partly from a patent application and partly from a utility model application - and vice versa.

Deadlines

Priority period

Section 40 PatG links the right of priority of internal priority to the condition that the second application must be filed “within a period of twelve months after the filing date of an earlier patent or utility model application filed with the patent office” (first application). This regulation corresponds to Art. 4 C Paris Convention for the use of an "external" priority (see above). The beginning of the so-called priority period is determined in accordance with Section 187 of the German Civil Code (BGB). This means that the registration date of the first registration is not included in the period. The end of the deadline is determined in accordance with Section 188 (2) BGB or Section 193 BGB.

Eligibility period

In order to claim internal priority, Section 40 (4) PatG requires a period of two months, which, according to Section 187 (1) BGB, begins on the day following the filing date of the (later) second filing. The end of the deadline is again calculated in accordance with Section 188 Paragraph 2 or Section 193 BGB. It should be noted that in accordance with Section 40, Paragraph 4, 2nd half-sentence (HS) PatG, the declaration of priority (declaration of claiming internal priority) is only deemed to have been submitted "if the file number of the earlier application has been given".

exclusion

Section 40 (1), 2nd HS PatG, excludes the possibility of claiming internal priority in the event "that a domestic or foreign priority has already been claimed for the earlier application". This regulation is based on the provision of Art. 4 C Para. 4 PVÜ, which is intended for an "external" priority (see above).

Withdrawal fiction

Pursuant to Section 40 (5) sentence 1 of the Patent Act, the earlier application "with the submission of the declaration of priority according to paragraph 4" (effective declaration of the use of internal priority for the subsequent second application) "is deemed withdrawn" if it is "still pending at the patent office" . This withdrawal fiction only applies if the initial application is a patent application. If, on the other hand, the earlier registration is a utility model application, the fictitious withdrawal does not apply, Section 40 (5) sentence 2 PatG, with the result that the utility model application remains in force.

It should also be noted that the withdrawal fiction according to the regulation explained above only takes effect if the earlier patent application "is still pending at the patent office , ie has not yet been granted for a patent. In the case of a granted patent, the withdrawal fiction under Section 40 (5) sentence 1 PatG no longer come into effect.

Utility model law

Utility model registration as a (later) second registration

In the context of utility model law, Section 6 of the Utility Model Act (GebrMG) is the legal basis for claiming internal priority. Paragraph 1 sentence 1 of this provision is almost identical to Section 40 Paragraph 1 PatG, so that the above remarks apply here as far as possible. The only difference to Section 40 (1) PatG is that, according to Section 6 (1) sentence 1 GebrMG, the second application may not be a patent application, but must be a utility model application.

Application of (further) provisions of Section 40 PatG

Section 6 (1) sentence 2 of the GebrMG determines (among other things) the corresponding application of Section 40 (2) to (4) and (5) sentence 1 of the Patent Act, so that what has been said above applies accordingly.

Withdrawal fiction

With regard to the withdrawal fiction of Section 40 (5) sentence 1 PatG, Section 6 (1) sentence 1 2nd HS GebrMG stipulates that - in deviation from Section 40 (5) sentence 1 PatG - "an earlier patent application is not deemed to be withdrawn", if the internal priority of the first application has been effectively claimed for the subsequent second application (utility model application).

See also

Individual evidence

  1. ↑ Law on the Community Patent and the Amendment of Patent Law Regulations (Community Patent Act) of July 26, 1979 ( Federal Law Gazette I p. 1269 ), amended by the Second Law on the Community Patent of December 20, 1991 ( Federal Law Gazette II, p. 1354 )
  2. ↑ a b Benkard-Schäfers, Patentgesetz, Utility Model Act, 10th edition, Munich 2006, Rn 1 to § 40 PatG
  3. ↑ Federal Court of Justice (BGH), in: Journal of Commercial Legal Protection and Copyright (GRUR) 1979, p. 621
  4. ↑ Benkard-Schäfers (individual ref. 2), marginal number 8 to Section 40 of the Patent Act
  5. ↑ Benkard-Schäfers (individual ref. 2), marginal no. 10 to § 40 PatG
  6. ↑ See decisions of the Federal Patent Court (BPatGE), vol. 26, p. 32 f.
  7. ↑ Benkard-Schäfers (individual refs. 2), marginal number 12 on § 40 PatG
  8. ↑ BPatGE, vol. 30, p. 192 f

literature

  • Georg Benkard , Patent Law Utility Model Law, 10th edition, Munich 2006 (quoted: Benkard editor)

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