Priority right
In the field of industrial property rights ( patents , trademarks , etc.) the term priority is used in slightly different ways:
- In a broader sense, priority means that property rights (such as a patent or a trademark) have a seniority that can be relevant in relation to property rights to one another, but also for the legal relevance of other occurrences in relation to the property right.
- In a narrower sense, priority means that a later registered property right is given priority on the filing date of the same earlier registered property right. This narrower meaning is shown below.
Legal basis
International treaties
The Paris Convention ( Paris Convention) creates transnational right of priority for the legal systems of all those countries that have acceded to the agreement. The Paris Convention makes provisions for patents as well as utility models, trademarks and designs (formerly “registered designs”).
In the Patent Cooperation Treaty (Patent Cooperation Treaty - PCT) is the priority right in Article 8. Anchored.
The Madrid Trademark Agreement (MMA) grants the right of priority in Art. 4 (2) .
The Hague Model Convention 1960 defines its own right of priority in Article 6 .
Germany and Europe
Patents
Section 41 of the German Patent Act relates materially to the Paris Convention and defines the formalities for this. In addition, § 40 PatG provides the basis for domestic priority claims.
The European Patent Convention creates a separate right of priority for European patent applications with Art. 87 .
Brands
Section 34 of the German Trademark Act relates materially to the PVÜ and defines the formalities for this.
The Regulation (EC) no. 207/2009 on the Community trade enshrined the right of priority in Art. 29.
Designs
Section 14 of the German Design Act relates materially to the PVÜ and defines the formalities for this.
The EU model regulation incorporates the right of priority of the Paris Convention in Art .
No right of priority in copyright law
There is no right of priority in copyright law . Copyright arises essentially automatically worldwide with the act of creation without registration anywhere, so that no right of priority is necessary. Identical works protected by copyright can coexist as long as there is no plagiarism .
Regulation content, meaning
The Paris Convention stipulates that within one year of the first filing of an invention in one Paris Convention, the patent applicant can claim the filing date of the first application for his patent applications in another Paris Convention. However, this is no longer possible after a year. The same qualitative determinations are made for trademarks and designs. The deadlines here are shorter, namely six months after the first registration. The stipulations and deadlines in German and European patent law and in EU regulations and international contracts are of the same quality as those in the Paris Convention on patents. The DE and EP regulations go beyond the Paris Convention insofar as they not only allow the transnational priority claim, but also the "internal priority", i.e. EP> EP, DE> DE.
Insofar as it is effective, the right of priority has the essential legal effect that the seniority of the later application becomes that of the earlier patent application used. For patents, this means that the state of the art, against which the patentability of the later filed patent application is measured, ceases to grow on the filing date of the earlier first patent application and does not continue to grow until the filing date of the second later application. In fact, this has two main effects:
- On the one hand, after a first patent application, the applicant has one year (the “priority year”) to consider whether he wants to commission further applications in other countries without the prior art (which includes his own pronouncements!) Further contradicting this it grows. Within the priority year, the applicant can, on the one hand, further evaluate technically whether his invention is commercially valuable and, on the other hand, he can evaluate initial results from patent offices in order to be able to assess the patentability of his invention.
- On the other hand, after the first application, the applicant can talk freely about his invention, for example with cooperation partners, because neither his own statements nor those of others count against him as prior art after his first application. Even against later applications submitted with priority claim for the first application, your own announcement no longer counts as state of the art.
Claim and effectiveness of the right of priority
In order for a priority of an earlier patent application to be properly claimed, the procedure before the German and European patent offices
- the later application (“subsequent application”) must be filed no later than one year after the filing date of the earlier application, and
- A declaration of priority must be submitted in the subsequent registration no later than 16 months after the earliest priority, stating the country, filing date and file number of the earlier application.
A priority that is formally correctly claimed is only materially effective if the subject matter that is to enjoy the priority can be found in the earlier application claimed (so-called invention identity). It is important here to determine whether the specific subject of the subsequent registration is immediately and clearly disclosed in the pre-registration from the perspective of the person skilled in the art. In the case of patents, the subject of the subsequent application is the entire combination of features that are claimed in a claim, while in the case of the prior application , the entire disclosure, i.e. in addition to the claims, the description and possibly the drawings, is decisive. In Germany, in addition to the requirement of direct and unambiguous disclosure in the sense of the classic novelty test , the person skilled in the art must be able to infer the subject matter of the subsequent registration of the overall disclosure of the prior application as belonging to the invention or as a possible embodiment of the invention.
If the priority claim matters, it will be reviewed by the examiner during the examination process. Possibly. Translations of the previous registration may be necessary for this.
details
Seniority
The term seniority can mostly be understood as an abbreviation for “filing date” or, if a priority is effectively claimed, the “ priority date” .
Submission date ./. Filing date
The day on which the registration documents for an application are first sent to the Patent Office (= filing date) is not always the filing date of this application in the legal sense. Divisional applications and branched utility models have a filing date prior to the filing date of the associated documents. It can be many years earlier and is the filing date of the application from which the divisional application or the branched utility model was split or branched off.
Chain priorities are not allowed
Chain priorities are not permitted, as the right of priority is only granted on the basis of the "first filing" of an invention as a property right application.
Multiple priorities are allowed
Multiple priorities, however, are possible. E.g. an EP application can claim multiple prior Japanese applications. You have to be aware, however, that combinations of different priority registrations may not effectively enjoy a priority because the combined content could not be found in any of the priority registrations. It then remains as priority on the filing date.
Partial priorities
Partial priorities are not permitted in Germany. If a patent claim claims a combination of features, each of which is disclosed in different prior applications, but not in this specific combination, a priority of one or more of these prior applications cannot be effectively claimed for this patent claim - the patent claim receives as Priority therefore the filing date of the subsequent registration. In the context of the identity of the invention, the entire combination of features claimed in a claim must always be used. In proceedings before the European Patent Office , on the other hand, partial priorities are permissible for patent claims with one or more generic expressions or otherwise alternative subjects (so-called generic "OR" claims).
Differences between a priority subsequent application and a divisional application
- Priority claims that cross national borders are possible and very common. Cross-national divisional registrations , however, are not possible.
- The content of a divisional application is usually part of the referenced parent application. The content of a priority-based subsequent registration, on the other hand, is usually at least that of the priority registration and is often supplemented or combined from several registrations.
- Divisional applications are granted the priority claim and the filing date of the parent application referred to. As far as system-internal (e.g. DE> DE, EP> EP) priority claims are concerned, the priority-bound subsequent filing is given the priority of the earlier filing, but retains its own filing date, which can be a maximum of one year later and from which the maximum possible term of 20 years is calculated.
- Claiming internal priority under German patent law also has the very serious consequence that the earlier German patent application is deemed to be withdrawn, while the division of a German application does not affect the existence of the parent application.
Examples
- A first filing (in the jargon Prio application called) in Germany on 1 February 2007 allows so-called (extended by any public holidays) until 1 February, 2008. Subsequent applications for the same item in other countries such as France or United States or collection method in Europe (EPC) or international ( Patent cooperation Treaty and the Patent cooperation Treaty - PCT) submitted without the prior art, to which, for example, in March 2007 draw near innovations, advances and so contrary to any subsequent applications. This priority also establishes the right to a patent for regional or national subsequent filings over other filings for the same subject-matter filed after February 1, 2007.
- An applicant first registered an invention in Germany on December 11, 2013. Then he starts marketing his invention. At the beginning of August 2014, he received a sufficiently positive review decision from the DPMA. He therefore decides to register in the USA, China and France at the beginning of December 2014. He therefore commissions translations and registers on December 10, 2014 in FR, US and CN, claiming the priority of December 11, 2013. The effect is that for registrations in FR, US and China, the cut-off date for the state of the art is December 11, 2013, not December 10, 2014. Therefore, your own marketing efforts are not considered state of the art compared to later ones Registrations in FR, US and CN.
- A Japanese company carries out development work in a certain area and, according to the progress made on March 1, 2014 (content A + B + C), May 3, 2014 (A + B + C + D) and July 5, 2014 (A + B + C + D + E) filing patent applications at the Japanese Patent Office. The later ones each have additions compared to the earlier ones. On February 26, 2015, the company filed an application with the European Patent Office, claiming the three Japanese priorities. The content is that of the third Japanese application, supplemented by further features (A + B + C + D + E + F). Depending on what it claims in the European procedure, it enjoys one of the Japanese priorities or the filing date in Europe as a priority.
- On June 5, 2014, a German company files an A + B + C invention for a patent with the DPMA. It continues to develop and registers again on May 31, 2015 with A + B + C + D at the DPMA, claiming the priority of the earlier application. The earlier registration is deemed to be withdrawn. The applicant then only has the later registration pending.
Web links
- European Patent Convention 1973 - Page at the European Patent Office
Individual evidence
- ↑ official German text (PDF) of the Paris Association Convention (PVÜ, English "Paris Convention" )
- ^ Judgment of the Federal Court of Justice "UV-resistant printing plate" X ZR 3/10 from August 14, 2012.
- ↑ Decision of the Enlarged Board of Appeal of the European Patent Office G 1/15 of November 29, 2016.
