Patents: Recent Case Reveals Problem Claiming Paris Convention Priority

May 19, 2002 Advisory

The Court of Appeals for the Federal Circuit recently heard the case of Group One, Ltd., v. Hallmark Cards, Inc., which highlighted a problem potentially encountered by patent applicants whose U.S. patent applications claim Paris Convention priority to foreign applications.

Certain events can occur before the priority date, which do not destroy novelty under the laws of the country in which the priority application is filed (the "priority" country), but do destroy novelty under U.S. law. For example, before filing a priority application, a foreign applicant might make a confidential "offer for a sale" to a customer in the U.S. Under the laws of the priority country, the confidential nature of this offer may preserve patentability. However, under U.S. law, the offer may trigger the "on-sale bar" under Section 102(b) of the U. S. patent law. Nevertheless, within a year after the priority date, but more than one year after the offer for sale, the applicant files either a U.S. patent application or an international application designating the U.S. Ultimately, a patent is granted, and the patentee then initiates litigation to enforce the patent. In litigation, the offer for sale is uncovered and is held to invalidate the patent under 35 USC §102(b) and 35 USC §119(a). Section 119(a) defines the scope of foreign priority but also limits that priority. Specifically, the section states that "no patent shall be granted…for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing."

This result is consistent with the language of the Paris Convention. Section B of Article 4 of the Convention states that an application claiming priority under Section A "shall not be invalidated by reason of any acts accomplished in the interval" between the filing of the priority application and the subject application. Inasmuch as the events identified in §102(b) and §119(a) would have occurred before the filing of the priority application, the result is permitted under the Convention.

In the Group One case, the patentee was able to avoid the effects of §119(a) by arguing that the activities involved did not rise to the level of a "commercial offer for sale" and may merely have been an offer to license future patent rights. Nevertheless, this case highlights the fact that a Paris Convention priority claim is not effective to defeat §102(b) events which occurred before the priority date.

Accordingly, consider whether a potential event such as an offer for sale in the U.S. has occurred prior to the priority date. If so, do not wait until the full Paris Convention priority year has lapsed before undertaking further filing activity. The filing of an international application designating the U.S. or a U.S. national application can be expedited so that such international or U.S. national filing is within one year of the event in question. Or, alternatively, file a U.S. provisional patent application within one year of the event in question. The provisional application need not be in English and, indeed, may simply be a photocopy of the priority application. A subsequent international application or U.S. national application may claim Paris Convention priority to the priority application and priority under 35 USC §119(e) to the provisional application. Because priority under §119(e) does not suffer from the same limitation as does priority under §119(a), a provisional filing date is effective to overcome the potential §102(b) event.

For further information contact:
William B. Slate