Priority

Priority protects against disclosure between priority demand and its own request. But it is not that simple …

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Chapter 1. Applicable text

France is a signatory State of the Paris Convention from the very first hour (the reverse would have been surprising): the article A4 CUP managing priority issues is well applicable in France.

The CPI does not explicitly indicate that CUP is applicable but the international treaties signed by France are applicable (A55 of the constitution of the 5th republic).

Chapter 2. Substantive conditions to be respected

Section 2.1. People who can claim a priority

2.1.1. Nationals of a Union State or Member of the WTO

Because the Unionist right of priority applies only to the States of the Union (A1.1 CUP) or a member of the WTO (A2.1 TRIPS together A1.1 CUP), it has been interpreted that only persons who are nationals of these States may claim a Unionist right of priority.

However, there are no conditions of residence for these nationals (A2.2 CUP or A2.1 TRIPS together A2.2 CUP).

Such persons are defined as persons who are domiciled or have establishments "effective and serious"In the territory of one of the countries of the Union (A3 CUP) or a member of the WTO (A2.1 TRIPS together A3 CUP).

2.1.2. Limitation

Nevertheless, this does not mean that there are only these conditions to claim a priority.

The only people who can claim priority are (A4.A.1 CUP):

• the applicant of the earlier application;
• his having cause:
  • the transfer of the right of priority must have taken place before the filing date of the application claiming priority;
  • the transfer of the right of priority must be recorded in writing (L613-8 CPIparagraph 5) on pain of nullity;
  • proof of the transfer must be provided in the 16 months from the priority date (R612-24 CPIparagraph 5).

It should be noted that the assignment of the priority application does not automatically entail, according to French case law, the assignment of the right of priority (the right of priority is an independent right, not incidental to the right to the patent, Court of Appeal of Paris, May 11, 1987): pay attention to the terms of the contract.

In addition, a broad stipulation of the type "with all the rights attached to it without any reservation or exception"Does not seem sufficient to give up the right of priority (Cass. com. June 18, 1996, No. 94-18909).

Section 2.2. Requests to claim a priority

2.2.1. Nature of requests

The application on which a priority claim for a patent application is based may beA4.E.2 CUP):

• a patent application,
• a utility model application.

2.2.2. Origins of requests

The priority request must have been filed:

• in a signatory country of CUP (A4.A.1 CUP);
• in a WTO member country (A2.1 TRIPS together A4.A.1 CUP).

The majority of "regional" applications (eg EP patent applications) provide that the filing of a "regional" application is equivalent to a national filing in one of the member countries. For example, a European application will give rise to a right of priority in France (A66 CBE).

In addition, the priority application may also have been filed in a country that provides similar priority provisions (L611-12 CPI).

Here is a list of CUP and WTO countries:

Section 2.3. Same invention

A subsequent request D contains the same invention as the previous application DA if the person skilled in the art can "apprehend" the object claimed from the previous application (Cass. com. of 31 January 2012, No. 11-10924, Time sport c. Go Sport), ie to deduce the object claimed from the previous application:

• directly (Cass. com. of November 6, 2012, No. 11-19375, Time sport c. Intersport);
• without ambiguity (Court of Appeal of Paris, pole 5, ch 1, October 27, 2010).

In particular, the prior application must accurately disclose the claimed object, even if it were in the description or drawings (L612-7 CPIparagraph 4).

If an element is not present in the previous application, this element will not benefit from the priority (L612-7 CPIparagraph 3).

Section 2.4. 12 months from the first request

2.4.1. Generality

It is only possible to claim the priority of an application during a period of 12 months from the first application (A4.C.1 CUP).

It is possible to ask to be restored in its right to file under priority, if one can justify a legitimate excuse (L612-16-1 CPIparagraph 1). This request (as well as the filing under priority) must be made within a 2 months from the expiry of the priority period (L612-16-1 CPIparagraph 2 and 3). However, the technical preparations for publication of the earlier application should not be completed (L612-16-1 CPIparagraph 3).

2.4.2. Real first request

A first request seems to be a request that has been:

• for the first time,
• filed in a CUP party state or a WTO member,
• and referring to the same invention as a subsequent application.

2.4.3. Fiction of first demand

1) Principle

By fiction, it is possible to consider that a subsequent request as "first request" (A4.C.4 CUP).

To do this, it is necessary to respect the conditions of theA4.C.4 CUP :

• the subsequent application must:
  • have the same object that the previous application (true first request normally);
  • have been filed in the same state CUP or WTO that the previous application,
• the earlier application must, on the filing date of the subsequent application,
  • have been withdrawn, abandoned or refused,
  • without being submitted topublic inspection
  • without leaving subsist rights,
  • that she not yet served basic for the claim the right of priority.

The earlier application can no longer be used as a basis for claiming the right of priority (A4.C.4 CUP).

In this example, at the D2 filing date, there is no entitlement for D1 and D1 has not been used as a basis for another priority claim.

2) Not withdrawn, abandoned or refused

It may happen that the earlier application, on the date of filing of the subsequent application, has not been withdrawn, abandoned or refused.

In this case, the priority claim for the subsequent application is not valid.

3) Have been subject to public inspection

This public inspection may be, in particular:

• publication under L612-21 CPI, 1 °;
• the notification of the article L615-4 CPI to make its patent application effective in any dispute.

4) To leave rights

It is not very clear what rights are covered by this expression.

As mentioned in the European directives (F-VI 1.4.1 Directives), we can think of the rights that allow another application to benefit from the filing date of a subsequent application (outside the priority):

• US "continuation" or "continuation-in-part";
• divisionaries;
• etc.

In the case presented, the D1 request is a first request for A, B and C, while D2 is a first request for D.

Note that FR1 will be a L611-11 CPI, paragraph 2 for FR2 because of its publication (for A and B).

5) Previous application excluding UPC

If the previous application is filed outside the UPC / WTO, the previous application will not be a first request (because it will not have created a right of priority, the contrary would be contrary to the spirit of the CUP) and will therefore not interfere. not a priority claim of a subsequent application in a CUP / WTO country.

6) Not having served as a basis for a priority claim

The mere fact that an application has claimed the priority of the earlier application (even if no publication takes place) renders final the fact that the earlier application is a first application.

7) Same applicant

If the applicant is not the same in the application (A4.C.4 CUP), things can be quite surprising.

Section 2.5. Exhaustion of the right of priority

If for a time French jurisprudence considered that the right of priority could be exhausted (Cass. civ, July 18, 1934, JACOBSON / PAISSEAU), the concept of exhaustion of the right of priority is now rejected by the courts (Paris Tribunal de Grande Instance, 3rd c., 1st Sect. September 28, 2010).

(Note: in this last decision, the court is seized of a European patent but explicitly mentions the spirit of the Paris Convention with regard to the exhaustion of the right of priority).

Section 2.6. Claiming multiple priorities

It is quite possible to claim several priorities, even if they come from different states (L612-7 CPIparagraph 2).

Chapter 3. Priority "internal"

Section 3.1. Principle

CUP does not foresee the fact that one can claim the priority of an application in the same state (A4.A.1 CUP, “to deposit in other countries“).

Faced with this gap, the French legislator has provided for national provisions to benefit from the filing date of an earlier French application under certain conditions: this benefit is commonly called "internal priority".

An "internal priority" request may be submitted for a French application A (L612-3 CPI):

• if another French application B (filed by the same applicant) was filed less than 12 months before;
• if neither A nor B claims a "unionist" priority;
• if B does not claim an "internal" priority of more than 12 months in relation to A;
• if B is "publishable" (R612-25 CPI, 3 °).

The request must be presented during the deposit demand (R612-25 CPI, 1 °).

Section 3.2. First request?

Article L612-3 CPI does not provide that the application for which the benefit of the priority date is required is a first application.

Section 3.3. Withdrawal and publication

Requiring the benefit of the filing date of a French application results in its publication at 18 months, even though this request would have been withdrawne (R612-39 CPI, 5 °).

This is very important because this request can be used as prior art L611-11 CPI, paragraph 3.

Chapter 4. Translation of the priority document

The INPI may require a translation of the part of the priority document which contains the filing date and the number of the foreign application, as well as an indication of the State in which or for which this priority application has been filed (Order of 19 September 1979 on the procedure for filing patent applicationsArticle 20).

It does not seem that the INPI can ask for more.

Chapter 5. Formal requirements

See the filing requirements for more detail.

Chapter 6. Miscellaneous

Section 6.1. Date of a claim

6.1.1. Principle

The date of each claim is analyzed independently of each other.

If an FR application filed at t1 claims an object A and the priority filed at t0 contains object A, then claim A has an effective date t0 (L611-11 CPI, paragraph 2, and INPI Examination Guidelines, IC VII.4.A).

6.1.2. A and B

If an RF application filed at t2 claims an object "A and B" and the claim claims two priorities (A to t0 and B to t1), then claim "A and B" has an effective date t2 (filing date of the request FR).

This principle will most likely be an exception if the priority filed at t1 explicitly mentions the priority deposited at t0, indicating that the characteristics of the two documents can be combined in a particular way (inspired by F-VI 1.5 Guidelines).

6.1.3. A or B

The use of the word "or" is in fact a sign that the claim must be analyzed as two claims.

If an RF application filed at t2 claims an object "A or B" and that claim claims two priorities (A to t0 and B to t1), then claim "A or B" has two effective dates:

• t1 for B;
• t0 for A.

6.1.4. A and / or B

A claim "A and / or B" contains 3 objects "A", "B" and "A and B".

Section 6.2. Withdrawal / waiver of priority claim

It is entirely possible to waive or withdraw a priority (this principle, even if not provided for by the code, is derived from the possibility of total or partial withdrawal of the request of the article L613-24 CPI according to INPI Examination Guidelines, IB II.5.6).

Deadlines (only those not expired, INPI Examination Guidelines, IB II.5.6.b) are then recalculated as from the new effective date of the application.

In addition, publication is delayed if the withdrawal occurs before the technical preparations for publication begin (INPI Examination Guidelines, IB II.5.6.a).

Section 6.3. Claim of an invalid priority

Claiming a priority does not protect against the opposability of this priority demand.

In the following situation, the priority request FR1 is opposable under the article L611-11 CPI paragraph 3, against object A claimed by FR2 because the priority is not valid.

Note that even if FR1 is withdrawn before publication, this will not change anything since requiring the benefit of the filing date of a French application results in its publication as a request (R612-39 CPI, 5 °).