Managing Priority Between U.S. and European Patents: Minimizing Ownership, Same Invention, Scope, and Other Risks

While protecting patentable inventions in both the U.S. and Europe is the foundation of many patent portfolios, priority arrangements in the U.S. can challenge obtaining patent protection in Europe. This problem was highlighted by the European Patent Office's (EPO) ruling on the CRISPR gene-editing patent last year.

The issue of priority was front and center in the EPO's Board of Appeal 2020 decision in the patent dispute over the rights to commercialize CRISPR technology. The Board held that the Broad Institute of MIT's European patent be revoked after it dismissed the institution's claims over its patent's priority date. The Board recently published its decision, which noted that it followed EPO case law on the issue of priority and found that all applicants must be listed on both the initial and subsequent applications to be entitled to priority.

It is critical for patent counsel to understand where the potential risks, whether related to ownership, same invention, or broad vs. narrow scope, may arise when preparing and filing patent applications in the U.S. or EU.

Listen as our authoritative panel of patent attorneys examines priority arrangements and patent protection in the U.S. and EU. The panel will discuss the differences between the jurisdictions and the potential pitfalls applicants may encounter, including disparities over ownership which pose some of the biggest risks. The panel will address how to avoid or overcome these challenges and offer best practices for patent filings to avoid priority issues and ensure protection in both the U.S. and EU.