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Federal Patent Court makes important decision on transfer of priority right

C&F: "Enhanced chances for the maintenance of property rights of innovative companies".

Düsseldorf, Oct. 21, 2021 - In its judgement of Aug. 4, 2021 (4 Ni 8/20 (EP) combined with 4 Ni 9/20 (EP)), the German Federal Patent Court (FPC) acknowledged a possibility of transferring the right of priority to be legally valid that is likely to be of significance for many patents currently pending.

The judgement was preceded by extensive nullity proceedings against a patent of a company from the mobile communications sector. The patent claims priority of a U.S. prior application filed in 2007 on behalf of inventors of the company. Only since 2012 it is possible for companies to file patent applications in the U.S. in their own name. Beforehand, patent applications had to be filed in the name of the respective inventors before they could be assigned for example to a company. If such a company filed a European or International subsequent application with effect for Germany subsequent to a U.S. patent application filed by the inventors, the inventors had to transfer their priority right to the company so that the earlier priority of the U.S. patent application could be claimed for the subsequent application.

Here, the judgement of the FPC follows the principle known at the European Patent Office (EPO) as the "Joint Applicants Approach". According to this principle, it is sufficient if at least one of several applicants of a subsequent application is the applicant of the previous application, so that all of them can jointly file a subsequent application that may validly claim the priority of this previous application.

Following this principle, according to the FPC, the subsequent International application underlying the Judgement, which indicates the inventors as applicants for the U.S. and the company as applicant for Europe, can be regarded as a joint application. A legal succession of the company already results from the joint subsequent application in such a way that inventors and company can act jointly as priority beneficiaries.

In its judgement, the FPC also follows a recent decision of the Higher Regional Court of Düsseldorf ("Cinacalcet II," March 4, 2021 - 2 U 25/20), which is based on an analogous case scenario. Furthermore, the FPC emphasized that the present judgement does not conflict with the decision of the Federal Court of Justice (BGH) in the case "Drahtloses Kommunikationsnetz" (X ZR 14/17). An implied transfer of the priority right, as given in the present case, was not precluded by this decision.

"For many innovative companies, the judgement of the Federal Patent Court should be good news, because it has recognized a possibility of transferring the priority right to be legally valid, which may still be of importance for a large number of patents and their patentees for more than ten years," says Dr. Peter Reckenthäler, patent attorney at Cohausz & Florack (C&F). "We are very pleased to note that, thanks to our efforts, a decision has now been reached by the FPC on this issue, which will ensure that important property rights are maintained and valuable innovations are protected." says Dr. Fabian Vogelbruch, patent attorney at C&F.

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