Priority and Patent Family Systems

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1 Priority and Patent Family Systems Domenico Golzio European Patent Office Imprenditorialità e (un percorso di Imprenditorato) Università di Pisa Pisa dgolzio@epo.org

2 Contents Paris Convention Multiple Priorities Patent Family System Patent Documents with the Same Priority Patent Family (Equivalents) INPADOC Patent Family

3 Paris Convention for the Protection of Industrial Property After filing a patent application (priority document) in a state at a certain date (priority date) the applicant can file: another patent application (family member) based on the same subject-matter of the priority document at any time (filing date) in the next 12 months in any state member of the Paris Convention while maintaining the same priority date (priority rights)

4 Paris Convention First filing Priority State A "Second" filing in State B "Second" filing in State C "Second" filing in State D F0 F1 F2 F3 1 2 m o n t h s Second filings of an application based on the first filing F0 F1 and F2 entitled to use the priority date as the first filing date F3 NOT entitled to use the priority date as the first filing date

5 Paris Convention First filing Priority Italy F0 "Second" filing in Europe F1 EP "Second" filing in US F2 US 1 2 m o n t h s

6 Paris Convention First filing Priority State A "Second" filing in State B "Second" filing in State C "Second" filing in State D D1 F0 D2 F1 D3 F2 D4 F3 1 2 m o n t h s D1 prior art for all filings D2, D3 and D4 NOT prior art for F0-F2 D2, D3 and D4 prior art for F3! If F0, or F1 or F2, is published before the filing of F3, it will anticipate the application F3.

7 Paris Convention: Multiple Priorities First filing Priority 1 Japan F0 "Second" filing in Europe as combination of priority P1 and priority P2 F1 EP First filing Priority 2 Japan F0' 1 2 m o n t h s

8 Paris Convention: Multiple Priorities First filing Priority 1 Japan F0 "Second" filing in Europe as combination of priority P1 and priority P2 D1 D2 D3 F1 EP First filing Priority 2 Japan F0' 1 2 m o n t h s

9 Paris Convention: Multiple Priorities Priority F0 discloses invention A Priority F0' discloses invention B Patent Application F1 has three claims Claim 1 defines invention A Claim 2 defines invention B Claim 3 defines an invention combination of invention A and invention B. This combination is defined for the first time in F1, i.e. is not present in F0 or in F0'! The filing date for Claim 1 is that of the priority F0 The filing date for Claim 2 is that of the priority F0' discloses invention B The filing date for Claim 3 is that of the application, i.e. F1

10 Paris Convention: Multiple Priorities D1 prior art for all filings D2 NOT prior art for F0 D2 NOT and not for the clams in F1 based on F0 D2 prior art for F0' D3 NOT prior art for F0 and for F0' D3 NOT prior art for the clams in F1 based either on F0 or on F0' D3 prior art for the clams in F1 NOT based on F0 or F0' D3 prior art for the clams in F1 based on combination of features of F0 and of F0' Depending on the formulation of the claims in F1 Novelty and Inventive Step can be selectively attacked by the disclosures of D1-D3

11 Paris Convention: Multiple Priorities (from different countries) First filing Priority 1 US F0 "Second" filing in Europe as combination of priority P1 and priority P2 F1 EP First filing Priority 2 Japan F0' 1 2 m o n t h s

12 PCT Route Paris Route Paris Convention: Multiple Priorities - A non improbable example JP-1 EP-3 GB-2 IT-2 DE-4 DE-1 DE-2 GM m PCT 30/31 m US-1 CN-1 EP-1 EP-2 GB-1 IT-1 GM-3 DE-3 GM-2

13 Patent Family Systems Family System of a patent document are all the parent documents directly or indirectly linked via a priority document Equivalents of a patent document are all the documents that have identical priority document or set of priority documents Family system and equivalents important because: indicate geographical coverage and supposed importance of the patent a members may be be written in a more familiar language may contain different/additional information might have a different publication date!

14 Patent Family: and exemplar set Patent Document D1 Priority P1 Patent Document D2 Priority P1 Priority P2 Patent Document D3 Priority P1 Priority P2 Patent Document D4 Priority P2 Priority P3 Patent Document D5 Priority P3

15 Patent Documents with a Common Priority All patent documents having at least one common priority belong to the same patent family.

16 Patent Documents with a Common Priority Family P1 Patent Document D1 Priority P1 Family P2 Patent Document D2 Priority P1 Priority P2 Patent Document D3 Priority P1 Priority P2 Patent Document D4 Priority P2 Priority P3 Patent Document D5 Priority P3 Family P3

17 Patent Family (Equivalents) All Patent Documents having exactly the same priority or the same set of priorities belong to one Patent Family.

18 Patent Family (Equivalents) Patent Document D1 Priority P1 Family P1 Family P1-P2 Patent Document D2 Priority P1 Priority P2 Patent Document D3 Priority P1 Priority P2 Patent Document D4 Priority P2 Priority P3 Patent Document D5 Priority P3 Family P2-P3 Family P3

19 Patent Family (Equivalents) But, "equivalent" members without original documents are not listed

20 An example of a patent family of EP All the following documents have the same priority date: They are all based on DE !

21 An example of a patent family of EP All the following documents have the same priority date: They are all based on DE !

22 An example of a patent family of EP All the following documents have the same priority date: They are all based on DE !

23 An example of a patent family of EP All the following documents have the same priority date: They are all based on DE !

24 All the documents directly or indirectly linked via a priority document belong to one patent family INPADOC Patent Family

25 INPADOC Patent Family Patent Document D1 Priority P1 Patent Document D2 Priority P1 Priority P2 Patent Document D3 Priority P1 Priority P2 Patent Document D4 Priority P2 Priority P3 Patent Document D5 Priority P3 INPADOC Family

26 INPADOC Patent Family! By clicking on "View INPADOC Patent family" of a patent document, esp@cenet runs an embedded routine interrogating INPADOC and other databases iteratively and retrieves all patent documents linked via their priorities! The routine takes care of different formulations of applicant and inventor names, different level of publications, legal status and any other information made available from the issuing patent office.

27 INPADOC Patent Family (US ) Click here

28 INPADOC Patent Family (US )

29 More questions? Please consult or write to Thank you!! Happy Families!