1

I was looking up the notorious Baer patent on video games and noticed this text:

1969-03-18 Priority claimed from FR6907714A
1971-03-22 Application filed by Sanders Associates Inc
...

On the face of it, that looks like a patent filed in 1971 is successfully claiming priority over one filed in 1969. (And indeed, it was US3728480A that ended up being enforced by the courts.) But as far as I know, patent law works strictly by 'first to file'.

I'm aware patents can be country-specific, and these are in two different countries, but if that were the explanation here, surely it would be FR6907714A has priority in France, just doesn't apply to the US?

But maybe I am just misunderstanding the legal jargon in use here? What am I missing?

1
  • 1
    can be country-specific - no, they always are
    – Trish
    Feb 9 at 8:41

1 Answer 1

3

Priority can be gained from filing somewhere

First of all, all Patents were filed by the same entity: Sanders Associates Inc.. This grants Sanders Associates, then employer of Baer, the power to use the first filing for a patent in other countries.

Sanders Associates filed in France for a patent in 69:

Application FR6907714A events

  • 1969-03-18 Application filed by Lockheed Sanders Inc, Sanders Associates Inc
  • 1969-03-18 Priority to FR6907714A
  • 1969-09-19 Priority to BE739124D
  • 1970-12-11 Publication of FR2034340A1
  • 1971-03-22 Priority to US00126966A
  • 1974-03-15 Application granted
  • 1974-03-15 Publication of FR2034340B1

That was the same company Baer worked at. Using this earlier filing in France, the filing by the same company made them first to file compared to other inventions that would be filed after the French filing. That is called Priority Rights under the Paris Convention. There's a hiccup though: you are only allowed to claim Priority as long as you file within 12 months of the application in another country under the 1967 treaty text. Sanders did file 24 months and 4 days later, but the publication of the French Patent only happened 3 months before the US patent application. The publication would be relevant for determining if something was disclosed to the public and thus prior art.

In either case, patents are always national. As such, a US Court chose to enforce the US patent, because that was the patent they can enforce, not the French patent. The French patent is only relevant in the US to grant one patent priority (e.g. be considered filed first) over one that is filed after the French patent but before Sanders Associates filed in the US.

Example

Say you and me invent a new Widget independently from one another. I write my patent application and run to the German Patent Office, filing on 9th February 2024. You take things a little more smooth and file on the 10th in the US.

Luckily I find a buyer for my patent and sell it to ACME CO on the 1st March 2024. ACME then goes and files in the US the same day, using my German filing for the Widget to claim priority.

Two years down the road, the USPTO examines your and mine (ACME's) patent. They are pretty much the same widget, and USPTO has to grant only one patent. What to do? You filed first in the US, I filed first in Germany.

However, now the Paris Convention Article 4 comes in: My German patent was filed within one year before the ACME filing in the US and ACME is the current holder of the German Patent. As a result, the ACME filing in the US is treated to be made on the same day as the German patent was filed. That makes ACME's patent have the earlier priority date and thus is handled as filed first for determining which patent to grant.

As Acme's Priority was filed earlier, ACME gets the US patent for the widget, but you don't.

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .