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Archived updates for Wednesday, August 08, 2007

Foreign Priority Requires Inventor/Applicant Nexus at Time of Filing

In Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc. (August 8, 2007), the Federal Circuit held that "a foreign application may only form the basis for priority under section
119(a) if that application was filed by either the U.S. applicant himself, or by someone
acting on his behalf at the time the foreign application was filed." In other words, "while the foreign application must obviously be for the same invention and may be filed by someone other than the inventor, section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed.

The USPTO's Board of Patent Appeals and Interferences had ruled in an interference proceeding that Cragg was not entitled to priority benefit under 35 U.S.C. § 119 for the Dake application because neither Cragg nor Dake had assigned their rights to MinTec until after Mintec had filed the European applications forming the bais for the priority claim. Scimed argued that the following portion of the Vogel decision did not require the foreign applicant to be acting on behalf of the U.S. applicant at the time the foreign application was filed:
This practice [of allowing a U.S. applicant to claim priority from a foreign application filed by someone else] arose because it was recognized that in many foreign countries, unlike in the United States, the actual applicant for a patent can be other than the inventor, e.g., an assignee. In light of this, we regard the language in § 119 referring to legal representatives and assigns to merely represent a codification of the actual practice under [the predecessor statute to § 119]. Since under United States law an application for patent must be made by the inventor, that practice
was based on the requirement that the foreign application, regardless of the
identity of the applicant, must have been filed for an invention actually made by the inventive entity seeking to rely upon it for priority purposes.
According to the opinion by Circuit Jude Mayer:
Scimed attempts to construe this language as permitting a U.S. applicant to benefit from a foreign application’s earlier filing date whenever “the invention described in the foreign application [is the same] one actually made by the U.S. applicant,” “‘regardless of the identity of the applicant’ of the foreign application.” According to its interpretation, “the Vogel court did not hold that the foreign application must have been filed by a person who was an assignee or legal representative of the U.S. inventor at the time the foreign application was filed, or that the foreign application must have been filed on his behalf in order for there to be priority benefit.” We disagree.

Vogel clearly held that the above-quoted passage “means that an applicant for a United States patent can rely for priority on the ‘first filed’ application by an assignee on his behalf.” Id. (emphasis added). Moreover, “the existence of an application made by[the inventor’s] assignee in a foreign country on behalf of one other than the United States inventor is irrelevant to his right of priority based on applications made on his behalf.” Id. In other words, while the foreign application must obviously
be for the same invention and may be filed by someone other than the inventor, section 119(a) also requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed. Indeed, as a matter of pure logic, an entity could not have filed a foreign application “on behalf of” an inventor without the inventor’s knowledge or consent; that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no
bearing here. Therefore, to the extent that there may have been any uncertainty or ambiguity in Vogel, we nowexplicitly hold that a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.
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