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Transfer and the priority right – make the right arrangements!

Transfer of rights & priority

If an inventor submits a patent application, it isn’t yet known in all cases who will ultimately be the owner of the patent. As is the case with all types of goods, a patent (application) is transferrable, but the transfer is still subject to a set of stringent rules. If you don’t do it properly, the risks you will be running are significant. In the worst-case scenario, this could involve the loss of the patent itself.

What can go wrong during the transfer?
In some cases, it turns out that the rights were not transferred, even though that was the intention of both parties. This happens, for example, in cases where no deed of transfer is drawn up. In other cases, the rights have, in fact, been transferred, but the effect of the transfer is only internal or only exists between the two parties concerned. Third parties, such as other companies, do not need to pay any heed to the transfer if the deed hasn’t been registered. This may have serious consequences with respect to any pledges or attachment, or in the event of insolvency.

Priority right not transferred?
A more difficult situation will arise if it turns out that a priority right has not been transferred. The priority right is the right to resubmit the application within one year of its submission (the priority year), for example, in the form of a foreign application, while retaining the original (priority) date. In such cases, the application will not carry the actual date of submission, but the earlier priority date.

What is the consequence of this?
In exceptional cases, it may occur that the application may be irretrievably affected and that no patent can any longer be obtained. A recent judgment by the Chamber of Appeal of the European Patent Office referred to a case in which it was established that the applicant had invoked a priority right it did not actually hold at the time of submission. The reason for this was that the transfer deed was not drawn up until later. The application therefore lost its original date of submission, with the result that the invention was no longer novel and so no patent could be issued.

What can you do to prevent this?
In order to be certain that an application has been transferred correctly, it can sometimes be sensible to submit the subsequent application in both names. That way, the transferring party will be deleted as an applicant and the legal chain of transfers will be easier to follow.

Would you like more information?
If you intend to effect a transfer during the priority year, it is important to seek the best advice. For more information on this subject, please contact your patent attorney.

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Hans Bottema

Hans Bottema

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