Grips 3/2019 - Prior rights

Since the US changed their patent law in 2013, the first-to-file principle applies virtually all throughout the world. That is, if two inventors independently invent the same thing, the one to first deposit the invention at the office receives the patent; it does not matter who conceived of it first. If one application is filed very shortly after the other, a special situation may arise which involves a so-called "prior right".

Example: Mr Early applies for a patent for his invention on January 1, 2020, and from then on keeps the innovation a secret until he finally goes public with a product one year later. In his application, he discloses the general idea but does not describe how to implement the invention in an economically efficient way.
Mr Late discovers the same invention independently of Mr Early. However, he still elaborates a more advanced embodiment of the invention before applying for a patent in June 2020. Unlike Earley, he describes his embodiment in the application document.
The obvious question is: who receives a patent and for what?
In principle, of course, the same invention should be prevented from being the subject of two distinct patents. To uphold said principle, there are different approaches at the legal level. As a result, the consequences for Mr Early and Mr Late may differ from country to country.


Read our grips 3/2019