Canada: Two different approaches to patent applications
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Canada: Two different approaches to patent applications

Background

CRISPR technology enables genes to be edited and can eventually treat diseases caused by gene mutations. This technology and its patents have been the subject of various court proceedings in Europe and the United States.

Nine parties opposed the CRISPR European patent. This was revoked due to what at first seems to be formalities in the chain of title. This is where North American and European practices clash.

As the European patent was opposed in Europe, European practice and standards were applied. According to these, the patent was invalidated. Had the patent been evaluated following North American standards and practice, it might have survived. Everything began with the designation of the applicant(s) and the rights to priority. In short, the CRISPR European patent was invalidated because the priority was found to be invalid: the PCT application did not designate the same applicants as those of the priority cases.

North American practice

In general, when an application is filed, the proper inventors need to be identified and a further review of the inventors' obligations to assign their rights to their respective employer or research institute is conducted. For example, imagine inventors A, B and C are named in a priority application. Inventor A needs to assign their rights to company X, inventor B has obligations towards company Y and inventor C to company Z. The priority application would be filed naming inventors A, B, and C, and naming as co-applicants companies X, Y and Z. A year later a PCT application is filed claiming priority on the prior application in the name of X, Y and Z. In this PCT application, once the claims are crystallised for filing, a review finds only inventors A and B have participated in the claimed inventive subject matter. Since their obligations are the same as the year before, only companies X and Y would be named co-applicants on the PCT application.

European practice

In the example above, at the priority application level, the identity of the inventors would also be looked at. A, B, and C would be named inventors and X, Y and Z would be named co-applicants. For the PCT application, only A and B would be named inventors, but companies X, Y and Z would still be named co-applicants. Inventor A assigned its rights to company X and inventor B assigned its rights to company B. There would then be a need for a further assignment, most likely in favour of company Z to respect the chain of title. However, in the case of institutions, sometimes it may not be easy or even possible to obtain this third assignment in favour of company Z.

The problem

The problem comes from the interpretation of Article 4 of the Paris Convention, which in a nutshell stipulates that a right to priority is accorded to any person who duly filed a patent application. The European patent office strictly interprets this article, insisting that the applicant(s) in both the priority and the subsequent applications are the same.

The solution

To prevent possible grounds of attack as seen in the CRISPR case, always sort out the complete chain of title before any filing. When filing a subsequent application claiming priority on a first one, ensure the same applicants are designated and have in place the appropriate assignments signed before filing the application so that it is seen as fully complying with the requirements. Although inter-institution collaborations are usually easy, sometimes making an institution assign part of its rights to another institution, which, according to North American practice, should have no rights in the claimed invention, might prove difficult. To explain the situation in overly simple terms, this situation might have been prevented had the applications been filed in the name of only one applicant. This case, although much more complicated in practice, might just be the example that will shake institutions into striking a deal before any applications are filed, naming a single applicant.

cawthorn.jpg

Christian Cawthorn


Norton Rose Fulbright Canada LLP

Suite 3800, Royal Bank Plaza, South Tower, 200 Bay Street, P.O. Box 84Toronto  Ontario  M5J 2Z4Canadawww.nortonrosefulbright.com

more from across site and ros bottom lb

More from across our site

A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
In the latest episode, the team discusses the battle to take control of listed company and IP business Qantm IP, and looks at some recent hiring trends
To mark Mental Health Awareness Week, lawyers explain how they manage their mental health, and how they pluck up the courage to ask themselves difficult questions
IP lawyers unpick a case heard at the CJEU’s Grand Chamber this week that could potentially create a new world for litigation in Europe
A lawyer who replied to a cease-and-desist letter with just two words has shown others how to deal with vexatious infringement allegations
The suggested rule change surrounding terminal disclaimers could ease the burden on defendants, but risks complicating prosecution strategies
Gift this article