No Priority without Reciprocity

In consolidated Decisions G2/02 and G3/02 - ASTRAZENECA, the Enlarged Board of Appeal has ruled that the TRIPS Agreement does not entitle an applicant for a European patent application to claim priority from a first filing in a state that was not, at the relevant date, a member of the Paris Convention even if it was a member of the WTO/TRIPS Agreement.

European patent applications had been filed as International patent applications under the PCT at the Swedish Patent Office on 12 March 1996, claiming priority from applications filed in India on 13 and 23 March the previous year. At that time India was a party to the WTO and the TRIPS Agreement, and the Government of India unilaterally published a notice declaring that WTO states would be Convention countries for the purposes of the Indian Patents Act. On 26 July 1995 (and again on 3 May 1996), the EPO wrote to the Government of India offering to extend priority to patent applications filed in India on a reciprocal basis. The Government of India did not reply, so no reciprocal declarations were in effect. Priority was denied.

 

Comment

India acceded to the Paris Convention in December 1998. There are now 168 signatory states. Newcomers in 2004 include Saudi Arabia and Namibia. A complete list can be found below.

Albania, Algeria, Andorra, Antigua and Barbuda, Argentina, Armenia, Australia, Austria, Azerbaijan

Bahamas, Bahrain, Bangladesh, Barbados, Belarus, Belgium, Belize, Benin, Bhutan, Bolivia, Bosnia and Herzegovina, Botswana, Brazil, Bulgaria, Burkina Faso, Burundi

Cambodia, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Democratic Republic of the Congo, Congo, Costa Rica, Côte d’Ivoire, Croatia, Cuba, Cyprus, Czech Republic

Denmark, Djibouti, Dominica, Dominican Republic

Ecuador, Egypt, El Salvador, Equatorial Guinea, Estonia

Finland, France

Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guatemala, Guinea, Guinea-Bissau, Guyana

Haiti, Holy See, Honduras, Hungary

Iceland, India, Indonesia, Iran (Islamic Republic of), Iraq, Ireland, Israel, Italy

Jamaica, Japan, Jordan

Kazakhstan, Kenya, Democratic People’s Republic of Korea, Republic of Korea, Kyrgyzstan

Lao People’s Democratic Republic, Latvia, Lebanon, Lesotho, Liberia, Libyan Arab Jamahiriya, Liechtenstein, Lithuania, Luxembourg

The former Yugoslav Republic of Macedonia, Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mauritius, Mexico, Republic of Moldova, Monaco, Mongolia, Morocco, Mozambique

Namibia, Nepal, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway

Oman

Pakistan, Panama, Papua New Guinea, Paraguay, Peru, Philippines, Poland, Portugal

Qatar

Romania, Russian Federation, Rwanda

Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, San Marino, Sao Tome and Principe, Saudi Arabia, Senegal, Serbia and Montenegro, Seychelles, Sierra Leone, Singapore, Slovakia, Slovenia, South Africa, Spain, Sri Lanka, Sudan, Suriname, Swaziland, Sweden, Switzerland, Syrian Arab Republic

Tajikistan, Togo, Tonga, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan

Uganda, Ukraine, United Arab Emirates, United Kingdom, United Republic of Tanzania, United States of America, Uruguay, Uzbekistan

Venezuela, Viet Nam

Zambia, Zimbabwe