Summertime reading - Fundamental historical decision transfer priority

I recently wrote an article in Dutch about transfer of priority rights under the Dutch Patent Act.  When studying the topic, I got the impression that the currently established case law (mainstream views) can all be traced back to a single old decision of the German Patent Office (of 16 December 1905).
That decision was published in BPMZ 1906 p. 127. For many issues about transfer of priority, current case law and current handbooks cite the old handbooks, in particular the book of Wieczorek, Die Unionspriorität im Patentrecht, 1975. That book in turn bases its view mostly on the German decision.
I've obtained a copy of the German decision from the DPMA - but it is difficult to read, not so much because of the German but because of the very old German font.
Only later, I found out that a French translation was published in Prop. Ind. 1906, nr. 6, which in turn is still available at the WIPO website. Even better, the French translation has selectable text. That allowed me to get a machine translation of the French translation. I've lightly edited the machine translation, but for a second degree machine translation, I think it is quite good.



Therefore, I am  happy to publish today the decision below.

Key points

• " It is therefore solely necessary to determine whether those rights, so far as they come into consideration, were transferred by S. [who was applicant of the priority-founding first filing to the applicant after the filing in Great Britain and before the filing in Germany. "
• " This means that the first filing in a Contracting State confers not only the right to obtain a patent in the country of first filing, but also the priority rights for patents to be obtained in the other countries of the Union. As many Contracting States, so many independent rights . These rights are fully independent of each other and the fate of the patent application in the country of first filing." 
• But the right of priority [to be invoked] in Germany arising from a first filing [abroad] in a country of the Union is a matter subject exclusively to German law, which results from the following considerations: ...
• "[The applicants] First Filing in Britain gave rise to the right of priority in Germany, not because the requirements of the Convention are applicable in Great Britain, but because they are in Germany; this right of priority has no relation with Great Britain, but only with Germany. " 
• " If, as set out above, the right of priority arising for Germany from a filing made abroad under Article 4 of the Convention is governed by German law, it is clear that in the presence of Article 11 of the Introductory Law of the Civil Code [EGBBG], it is also the German law that governs the transfer of this right, regardless of where the assignment was made. "

KPA (German Patent Office) 16 December 1905 

Machine Translation from Prop. Ind. 1906 nr. 6

http://www.wipo.int/edocs/pubdocs/fr/intproperty/120/wipo_pub_120_1906_09.pdf
German original PDF of BPMZ 1906 p. 127 (source: DPMA)

The D. limited company in London asserts the right of priority provided for in Article 4 of the Union Convention for the patent application filed on 2 June 1904 by the German Patent Office. It relies on that for a request which was presented in Great Britain, on 2 June 1903, by a Mr LS in London, and which concerns the same subject (British patent No 12523/1903).
In order to justify its claim of priority, the Applicant alleged, in the course of the proceedings before the Receiving section, that S. is only "nominally" the holder of the British application and the granted British patent, and to prove her allegation, she produced a sworn statement, signed by S., in which he asserts that the D. limited company, of which he is the director and principal, was the owner of the invention already at the time when the English patent was requested.
The [receiving] section did not recognize the existence of a priority right in favor of the applicant, and therefore refused the patent for the reason that at the time of the patented invention 12523/1903 had already been made public.
The grounds of the rejection order argue that a right of priority based on the Convention of Union could not be recognized in favor of the English patent, for the reason that the application in Great Britain did not emanate from the same person as that formulated in Germany, and that at the time of the latter, it had not yet been transmitted to the applicant. The declaration filed, according to which the plaintiff of the English patent was or is still in business relations with the applicant of the application in Germany, is not sufficient to prove the necessary identity in the person of the applicants, or to establish a transfer of rights has taken place.
This order can be approved only as long as the receiving section considers the applicant's allegations to be non-probative, according to which it is she, and not S., who must, in fact, be considered rights resulting from the application lodged in Great Britain. These claims, in fact, are contradicted by the simple fact that the claim was made in Great Britain by LS, while the claim in Germany comes from the legal entity "D. Limited".
It can not therefore be a question of a person's identity. As to the claim that the applicant was the owner of the invention already at the time of filing the English patent application, it is not such as to justify the existence of a right of priority arising from the English application.
Indeed, the rights resulting from a deposit made in one of the Contracting States are bound by Art. 4 of the Convention, to the person of the applicant. 

It is therefore solely necessary to determine whether those rights, so far as they come into consideration, were transferred by S. to the applicant after the filing in Great Britain and before the filing in Germany. In this respect, the receiving section errs when it finds that there is no proof of the transmission of the rights on the application and on the English patent. This proof, indeed, matters very little. 
The application for the grant of the English patent, and the English patent itself, are not the subject of the transfer of rights in question, and their transfer is not necessary either for the there is succession in the right of priority. It is the latter alone which is the subject of the transmission, and S. acquired it, as far as Germany is concerned, at the time when the British application was made. 

Article 4 of the Convention provides that "a person who has regularly made the filing of an application for a patent ... in one of the Contracting States shall, for the purpose of depositing other States ..., a right of priority ".
This means that the first filing in a Contracting State confers not only the right to obtain a patent in the country of first filing, but also the priority rights for patents to be obtained in the other countries of the Union. As many Contracting States, so many independent rights . These rights are fully independent of each other and the fate of the patent application in the country of first filing.
The right of priority in respect of Germany, - being admitted that this right is transmissible, - could still have been transferred to the applicant, even if the English filing had been definitively rejected or withdrawn. Therefore, it is essential not to know whether, at the time of filing in Germany, the applicant had acquired the English application or the English patent, but only if it had been made a valid assignment of the right of priority to with regard to Germany. 

Before examining, for the purpose of resolving this question, the facts alleged by the applicant, it must first be determined if it is German law or foreign law which is the rule with regard to the transmission of the right of priority in question, and by which of these rights the form of the transmission is governed. 

The provisions applicable in the first line are those on private international law contained in the introductory law of the Civil Code.
Article 11 of this article prescribes in its first paragraph that: "the form of an act is governed by the laws which apply to the legal subject in which the object of the act falls".
The introductory law does not lay down the applicable law for all areas of law, where it may be a matter of applying a foreign law as well; in sections 13 to 15 it has only dealt with a few matters which are not relevant here.
For considerable areas of law (real rights, obligations), it has not elaborated any rule, nor has it dealt with patents. 

But the right of priority [to be invoked] in Germany arising from a first filing in a country of the Union is a matter subject exclusively to German law, which results from the following considerations:
The Convention has had the effect of enlarging measure the right of each of the States of the Union in matters of patents. The requirements of the Convention are therefore incorporated into the domestic law of each of the Contracting States. .They are applicable in each of them because they have been declared in force by means of domestic legislation, and not because the Convention would be considered as a source of law for the territory of the Union; indeed, as an international treaty, the Convention does not create any normative provision, but only the rights and duties of the Contracting States to each other. Therefore, in the presence of Article 4 of the Convention, the first filing in a Union State gives rise to the following remarks: Here is the same application to as many different legislations as there are States in the [Paris Union]. 

In the particular case, the first deposit of S. is subject to English law only in that it tends to obtain the English patent. As for the priority rights based on this first filing with respect to other countries, it is the law of those other countries which applies to it, and in the first place the provisions of the Convention, which are applicable in these countries as internal law.

 S.'s First Filing in Britain gave rise to the right of priority in Germany, not because the requirements of the Convention are applicable in Great Britain, but because they are in Germany; this right of priority has no relation with Great Britain, but only with Germany. 

It is inadmissible to resort to foreign legislation to pronounce on the existence of the basis (right of priority) of a German patent application and patent;
On the other hand, German law may provide that an application submitted abroad has the same effect, from the point of view of priority, as if it had been lodged in the country, and this has occurred. The provisions of the Convention and, consequently, Article 4, have been declared in force in Germany by law. The prescriptions of the Convention have settled the conditions of the Unionist priority only insofar as this seemed necessary to enable the Union to fulfill its purpose. For the rest, the right of priority in respect of a Contracting State is subject to the other laws of that State. In particular, these laws govern the transmission of the right of priority. 

For the right of priority in Germany resulting from the first filing in a country of the Union, Article 6 of the German Patent Law is applicable. The rights deriving from the patent application are transferable, whether these rights are based on a request submitted to the German Patent Office, or on a first filing made in another country of the Union. It is not only the question of whether a German patent must be issued or maintained according to German law, but also of whom the patent is to be issued; foreign legislation can not exert any influence on the official act of issuing a German patent. 

Furthermore, if one wishes to dispute the applicability of German law, one would be to arrive at the conclusion, that is to be immediately rejected, that the priority in Germany might have different effects in terms of transferability, seizure, etc. depending on whether the first application was submitted in one country or the other.
If, as set out above, the right of priority arising for Germany from a filing made abroad under Article 4 of the Convention is governed by German law, it is clear that in the presence of Article 11 of the Introductory Law of the Civil Code, it is also the German law that governs the transfer of this right, regardless of where the assignment was made. 

According to Article 413 of the Civil Code combined with Article 398, the transfer is not subject to any formal requirements.

The plaintiff has established in the proceedings before the Appeal Section that the rights resulting in favor of S. from the first filing in Great Britain were transferred, in the absence of any special form, to Company D. limited; it established it by the production of a declaration in lieu of oath, certified and legalized, in which S. declares that on June 2, 1904 and before that date, he yielded to the applicant, and to no one else, the right to apply in Germany for a patent for the invention covered by the English patent 12523/1903. Given the special circumstances of the particular case, this statement may be considered as sufficient evidence of transmission. Indeed, according to the allegations of the applicant, confirmed by a declaration in lieu of oath of her English agent, i. GL in London, the application in Great Britain was filed under the name of S. only for the reason that, in this country, the law does not admit a deposit made on behalf of a juridical person; on the other hand, after the filing in Great Britain, the interested parties agreed that in Germany in particular, where such a restriction does not exist, the application is made on behalf of the D. limited company, owner of the invention. In addition, it is the same company which, according to L.'s statement, has borne the costs of the demand in Great Britain. Finally, the power to submit the application in Germany is signed by S. himself, as director of the D. limited company. All these indications are such as to admit that S.'s affidavit is true, and it does not appear necessary to order further evidence. By transmission, the applicant has acquired the right to avail herself of the right of priority arising from the first filing which took place in Great Britain for the deposit made in Germany on 2 June 1904, that is to say within the period of 12 months provided by the Convention. It was not necessary that, at the time of filing in Germany, she should become known as the successor of S. The indication of that status had nothing to do with the substantive merits of the right of priority. ; it must be done only when it becomes necessary to assert that right, that is to say, as the case may be, only in the invalidity proceedings. 

It must be pointed out, however, that the fact that no deed of assignment dating from the time between the first filing in Great Britain and the application in Germany could be produced gave rise to great difficulties; therefore, in order to achieve rapid and simple administration of the necessary evidence, and in order to avoid the lapse of rights, it can not be sufficiently recommended to the interested parties to establish the documents proving the transmission during the course of the 12-month period, and before the filing of the application in Germany. 

Remittal of the case back to the receiving section seems appropriate, because the rejection of the application took place because of the existence of the English patent 12523/1903, which is no longer opposed to the grant of the German patent, and because, in these circumstances, the receiving section will have to make a new examination as to whether there are no other facts impeding the grant of the German patent.