Introductory example
In the early 2000s, when the mobile phone world was still dominated by keypads and resistive screens, several companies were working in parallel on the development of the capacitive touchscreen, which was to enable intuitive control via finger movements for the first time. Two teams, one from an American start-up A and one from a large Asian corporation B, independently arrived at the decisive solution at almost the same time: a combination of multi-touch hardware and gesture control that enabled functions such as swiping and zooming. The patent applications arrived at the office within the same week, one on the evening of July 3 and the other in the early morning of July 4.
The background to the concept of the prior right is a situation in which two people submit applications for the same invention (almost) simultanously. Although this situation sometimes seems to be of particularl interest, it actually occurs relatively rarely compared to the occurance of prior art.
At that point in time, when A and B filed their respective applications, there was no prior art for either application, so the inventions could be considered novel and inventive. If there were no further legal regulations, both Company A and Company B would have to be granted a patent for the same technology.
In many cases, the invention of the first applicant is published immediately after the application is filed. This means that by the time the other applicant files their application (at a later date), the invention has already been published. In this case, the second applicant does not receive a patent due to lack of novelty.
However, if A had presented its invention publicly at a trade fair on the day of its own application, this disclosure would already have been prior art for B. In this case A's presentation would have precluded the novelty of B’s later application – with the result that B would no longer have been able to obtain a patent, while A would be protected by its own earlier application.
However, the situation is different if the prior application has not yet been published at the time of filing the later application. In this constellation, there is no pre-published prior art that would prevent the second application from being patented. Without additional rules, it would therefore be possible for two companies to obtain patents for the same invention. This would imply, for example, that they could exclude each other from using the invention. Interested third parties would have to obtain licenses from two patent holders.
Without additional rules, both the start-up and the electronics company would own a patent on the capacitive touchscreen. As a result, no device with multi-touch functionality could be launched on the market without the consent of both companies. A smartphone manufacturer wishing to incorporate this technology would therefore have to obtain permission from both patent holders and conclude two license agreements—one with the start-up and one with the corporation. For the industry, this would mean that the introduction of touchscreens could become significantly more complicated, expensive, and slower, because each manufacturer would have to negotiate twice in order to be able to produce with legal certainty.
The legislator has solved this problem by stipulating that not only all prior publications but also, earlier applications are considered prior art if they are subsequently published by the patent office as a pantet application. This rule destroys the novelty of the later application and ensures that only the earlier applicant obtains the patent. This mechanism ensures that the person who first filed their application to the patent office obtains patent protection, regardless of whether the inventions were created independently of each other.
A's application is published by the patent office 18 months after its submission. With this publication, it is retroactively considered to be prior art for B's application. Therefore it destroys the novelty of B's application. This rule ensures that only A receives the patent, while B comes away empty-handed.
However, the decisive factor for the creation of the prior right is that the earlier application exists long enough to be published later by the patent office. This means that the mere filing of the application is not sufficient to prevent the later application from being patented. Only upon publication does the earlier application become a prior right, and therefore state of the art for the later application. However, if the earlier application is not published, no prior right arises and the later applicant can obtain the patent. Thus, the loss of novelty of the later application depends on the earlier application actually being published by the patent office.
After three months, A loses interest in its application and therefore withdraws the application. Since such a withdrawn application is not published by the office, no prior rights arise from it. For B, this means that its application is still considered novel and is not destroyed the earlier filed but unpublished application. In this constellation, B could therefore obtain the patent for the capacitive touchscreen, even though A had filed earlier.
The legal situation of the second application remains unclear until the first filed application is published by the patent office, which usually takes place18 months after its filing. Only then will it become clear whether there is an earlier right for the second application that is considered prior art. Until that time, it remains unclear whether the second application will be blocked by the earlier right or not. The date of publication of the second application is irrelevant.
In B's application process for the capacitive touchscreen, it is completely unclear until the publication of A's application whether B is granted a patent or not. As long as A's application has not yet been published, the patent office can not yet assess whether there is a prior right that would destroy B's claims. For B, this means that its own application remains in limbo for the time being: although the office examines formal and technical aspects, it must postpone its decision on granting a patent until it becomes clear after around 18 months whether A's application will actually be published. Only with this publication will it become apparent B will obtain a patent for the multi-touch technology.
The emergence of patent protection does not depend on who actually made the invention first. The only decisive factor is who filed their application with the patent office first. An earlier creation or development is irrelevant as long as it is not documented by an application or publication. A so-called first-to-invent rule, in which the first invention in time was decisive, once existed in US patent law, but has since been abolished. Today, the first-to-file principle also applies there.
Let's assume that B actually developed and documented the capacitive touchscreen in its laboratory several months before A. B experiments, writes reports, and tests prototypes, but decides to submit the application on July 4. A, on the other hand, submits its application on July 3, one day earlier. In this situation, A will have the prior right for the invention, even though B actually made the invention first. Neither does B's preliminary invention prevent the grant of As patent, nor will it help B in any way to get its own patent.
Legally, it is assumed that the content of the earlier application, namely the whole document, is considered to be the state of the art on the date when it was filed. This creates a somewhat artificially advanced state of the art, which, however, only becomes effective once the earlier application is actually published. Prior rights thus represent a special case of the state of the art: the later application loses its novelty, not because the invention was already generally known, but because the law stipulates that the previous application has the effect of a prior publication. This technicality ensures that only the first applicant obtains patent protection.
In the case of the two applications, this means the following: A files its application for the capacitive touchscreen on July 3, B follows on July 4 with an application with the same content. According to the legal fiction, the content of A's application is treated as if it already belonged to the state of the art on July 3. As soon as A's application is published after 18 months, it therefore has retroactive effect against B's application. This means that B's touchscreen invention is no longer considered novel. Ultimately, B's application fails due to lack of novelty.
If two identical inventions are filed with the patent office on the same day, neither of them is considered to be the prior right. Since the legislator determines priority only by days, not by hours or minutes, both applications are treated as equal. This means that there is no prior art that could render the other application non-novel. Consequently, both applications can lead to the grant of a patent.
A submits its application on July 3 at 9 a.m., B on July 3 at 3 p.m. Although A was actually a few hours earlier, this time difference is irrelevant. For the patent office, only the date counts, not the time. Therefore, both applications are examined side by side and both can lead to a patent – with the consequence that smartphone manufacturers would later need licenses from both companies. In the end, it does not matter who submitted their documents in the morning or in the afternoon.
If a later applicant files an application that is essentially identical to an already filed application but also contains an additional technical feature, a different situation arises: Everything disclosed in the earlier application counts as prior art. This means that the later applicant can no longer obtain a patent for the basic idea because it lacks novelty.
However, the situation is different for patent claims that extend the basic idea with this additional feature. If this additional feature is not disclosed in the prior art, the later applicant can obtain a separate patent for it. This means that both patents can have coexisting patents: the application that forms the prior right may protect the basic idea and the later application may claim the basic idea in combination with the additional feature. However, mutual licenses are often required for practical use, as the later applicant may protect the extension, but the basic idea continues to be patented by the earlier applicant.
A applies for a patent on the capacitive touchscreen (X) and obtains protection for it. B later also submits an application, but with a decisive improvement: a haptic feedback system (Y) that triggers a slight vibration with every gesture. Since A's patent claims already cover all the features of the touch screen, B can no longer obtain a patent if it only claims the touchscreen. Claim 1 ("touchscreen with multitouch function") is therefore not novel. Patent claim 2, on the other hand ("touchscreen with multitouch function and integrated haptic feedback system"), could be novel, because the additional feature relating to the haptic feedback is not disclosed in the prior art. This would give B a somewhat restricted patent on the combination. In practice, this would mean that anyone who wants to build a smartphone with a haptic multitouch display would need a license from both A (for X) and B (for the extension X+Y).
Prior rights only ever have a territorial effect, this means they only have effect in the country in which the resepctive application was filed. While the pre-published state of the art has a global effect and any subsequent application in any country can be detrimental to novelty, prior rights are limited to the respective country of application. So if two identical inventions are filed in different countries, these applications do not initially stand in each other's way. Each applicant can obtain a patent in their country as long as no further steps such as international subsequent applications or priority claims are taken.
A files a patent application for a capacitive touchscreen in the US on July 3, and B files the same invention in China on one day later. Since prior rights are territorially bound, A's application in the US has no influence on B's application in China and vice versa. This means that A obtains a patent in the US and B obtains a patent in China. Both can assert their property rights independently of each other, and a smartphone manufacturer that wants to be active in the US would have to get a license from A, a smartphone manufacturer that wants to be active in China would have to get a license from B.
