Hand Out 24-A (Rev.

)
Session 27
Patents

The priority date is the date of first filing of an application for a patent (or an
industrial design or a trademark), which triggers a time-limited right of priority in favor
of the applicant or his successor-in-title. This right allows the applicant to file a
subsequent application in another country within a specified time for the same
invention or design or trademark effective as of the date of filing the first application,
and to claim priority for that subsequent application over any other application filed
in that other country within that time. The time limit is 12 months for patents, and 6
months for designs and trademarks. When the applicant claims priority for his
subsequent application (which he must, if he wishes to exercise his right of priority), the
priority date (or the date of first filing) is considered the effective date of filing for
examination of the novelty of the invention for purposes of the subsequent application.
In other words, the novelty and inventive step of the invention is determined for
purposes of the subsequent application by reference to the art made available and
known to the public before the date of the first application and not the art made
available after the date of the first application but before the date of the subsequent
application. This means that only prior disclosures made before the priority date and not
the prior disclosures made before the date of the subsequent application can be
used to object to the subsequent application.
Application as part of any method of medical treatment, however, is not
considered to be an industrial application.
The parties can ask for discovery of documents before the trial in infringement
proceedings. (Norwich Pharmacal v. Customs and Excise (1974)).
The plaintiff can ask for an interlocutory injunction to maintain status quo
during the trial, if he can establish that, should he lose the case, the defendant would be
adequately compensated by damages. (American Cyanamid v. Ethicon (1975)).

AHamid
11/5/2020