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Blog | Priority right: All conditions for your claim | EP&C

2023-03_EPC_Blog Prioriteitsrecht_2_Kolom_356x301If you are the owner of a Dutch patent application then surely you will not have anything to worry about when it comes to protection? Not quite. In order to validly claim your priority right you will have to meet certain conditions. In this blog I will explain what these are and what you can do to prevent a situation in which you can no longer claim a priority right.    

So how does it work again? 

Let's start by taking a step back for a bit more context. The priority date is the day on which you file your Dutch patent application. Anyone who comes up with the same invention after that date will be too late. The right you acquire in this way is referred to as a priority right. From the date on which you filed your patent you have 12 months to decide whether you also want to file it in other countries. We refer to this first year as the priority year. 

Claiming a priority right

By claiming a priority right you can stop others from subsequently obtaining a patent for the same idea. It is an important weapon when it comes to protecting your intellectual property. There are two conditions you have to meet in order to validly claim this priority right. 

  1. It has to involve the same applicant.
  2. It has to involve the same invention.

The same applicant

This may sound obvious but in practice this is not always the case as some changes may still take place in the first year, i.e. the priority year.

For example, a smaller inventor may have filed a patent application but may be reluctant to cover the costs and get involved in the lengthy procedure. He may also have become interested in something else in the meantime and so he decides to transfer the patent application to someone else who does want to proceed with his initial invention in the first year. You may decide to take over the patent application from them or someone else’s patent application. 

It is important to bear this in mind if the company is taken over, changes its name, transfers the IP rights to a separate limited company or if a partnership is set up or terminated during that first year.

Transferring the registration

It is perfectly fine not to proceed with the patent application yourself in the first year and leave this to someone else. You will then just need to make sure that the priority right is transferred before the end of the first year. This transfer has to be registered and the registration must not only state that the patent application has been transferred but that the priority right has been transferred as well. So it is important that you discuss this with your Patent Attorney if you are in the process of taking over a patent application. 

Don't lose your rights

So what if you fail to do this? Then you will not be able to claim a priority right. In other words, you will not be able to claim that you are the first with this innovation. In the worst case scenario you will not be able to obtain a patent on your follow-up application outside the Netherlands at a later stage because the new applicant will be seen as someone else and will therefore not be entitled to a priority right. And if you decide to file a European application for example, the Dutch application could be regarded just like any other Dutch application that was filed earlier. This may get in the way of patenting for the Netherlands via the subsequent European patent or for a unitary patent. The consequences of not transferring the priority right is complex. The most important message is that you have to make sure that you don't forget to take action if your patent application has to be put into a different name in the first year after filing. If anything related to the ownership changes you must inform your Patent Attorney. 

The same invention

As if that weren't enough, your claim for a priority right could also still go wrong if any changes are made to the invention in the priority year. It is not uncommon for this to happen, after all, you are still in the process of developing it. 

In the Netherlands, we have to deal with the really strict European Patent Office (EPO), which will assess your application. When you file your follow-up application - the applications you file in other countries to protect your innovation there too - you are allowed to add things to this. Say you had initially only filed an application for a yellow bicycle but then gradually realised that a blue one would also work. You can then add that. As long as the initial claim remains intact this should not be a problem. 

It should be noted however that in the above case the priority right will apply to the yellow bicycle only and not to the blue one. That means that the assessment date for novelty and inventive step for the yellow bicycle will be the filing date of the Dutch patent application and for the blue one the filing date of the follow-up application. So if you or someone else shows or sells that blue bicycle before the follow-up application has been filed in which the blue bicycle is mentioned you will no longer be able to get protection for that one. 

Talk to your Patent Attorney

Inventors often think they can do anything they want with their product once they have applied for a patent. But the claims - the definition of the innovation protected by the patent - are often about a specific aspect. If you are going to add a different seal to the sensor you came up with, that seal may not be protected. If you do not include this improvement in the patent application someone else can apply for a patent on this as it is an improved version of your original idea. So if you are planning to make changes to your invention, make sure you discuss them first. A patent attorney knows exactly what is and is not protected within your patent application and how to ensure that any further developments are also protected.  

If you want advice about taking over a patent application or are considering changing your innovation in the priority year, please feel free to contact me. I would be happy to share my thoughts with you.