Priority claim under section 119 denied; foreign application not filed "on behalf of" U.S. applicant
August 08, 2007

Today the Federal Circuit addressed whether priority to an earlier-filed foreign application may be claimed under § 119(a) if there was no legal relationship between the foreign applicant and the U.S. applicant at the time the foreign application was filed. The court held that the right of priority under § 119(a) is personal and determined at the time of filing.

As a result, in order to claim priority under § 119(a), the foreign filing must be on behalf of the U.S. applicant at the time of filing. This requires at least some "nexus" between the inventor and foreign applicant at the time of filing—the existence of a relationship after the foreign application is filed does not permit a priority claim if none existed when the application was filed.

This appeal was from a decision by the Board of Patent Appeals and Interferences awarding priority to Medtronic in a three-way interference. The parties to the interference were:

  • Cragg, inventors who assigned their application to Scimed (now Boston Scientific Scimed), U.S. filing date 6-5-1995
  • Fogarty, inventors who assigned their application to Medtronic, U.S. filing date 6-5-1995
  • Martin, not a party to the appeal, U.S. filing date 8-19-1994

Fogarty claimed priority to an earlier U.S. application filed 6-8-1994, while Cragg claimed priority to two earlier European applications, the earlier of which was filed 2-9-1994. Based on these claims, the BPAI intially declared Cragg the senior party.

Fogarty challeged this designation, asserting that Cragg's priority claim was ineffective. The European applications at issue were filed by MinTec SARL, a French company who, at the time the applications were filed, had no legal relationship with the inventors of the U.S. application. Because of this, the BPAI held that Cragg could not claim priority to the European applications, and named Fogarty the senior party. Fogarty eventually prevailed in the interference. Scimed sought review in the District Court for the District of Columbia, but that court reached the same result, and Scimed appealed.

The Federal Circuit affirmed. As stated by the court, the issue is:

whether 35 U.S.C. § 119(a) permits an applicant for a United States patent to benefit from the priority of a foreign application previously filed by an entity that was not acting on behalf of the U.S. applicant at the time of filing.

The court, citing a CCPA case construing § 119, noted that the right of priority provided by that section is "personal" to the applicant, and because of this, the priority claim is only permitted when the foreign application "was filed by the U.S. applicant or on his behalf."

The court construed this requirement literally to require that the foreign application must actually be filed on behalf of the U.S. applicant, and that post-filing behavior or changes in circumstances are irrelevant to whether priority may be claimed. As stated by the court:

[W]e now explicitly 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.

While the court did not state specifically what had to be shown, it did give some guidance:

[W]hile 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.

Applied to this case, because no legal relationship existed between the U.S. applicants and MinTec SARL existed when the European applications were filed, the U.S. applicants could not effectively claim priority to the European applications. As a result, the Cragg inventors (and Scimed) could not predate Fogarty's (Medtronic's) priority date, and the award of priority to Fogarty was affirmed.

To read the full decision in Boston Sci. Scimed, Inc. v. Medtronic Vascular, Inc., click here.

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