The international right of priority is governed, in the United States, by section 119 of title 35 of the United States Code (“Section 119”), which implements Article 4 of the Paris Convention on the Protection of Industrial Property and establishes the requirements for transforming a subsequent application for an invention into a first application, the only application entitled to a right of priority under the statute. This paper explores the history and context of Article 4(C)(4) and Section 119(c), and finds that Section 119(c) and Article 4(C)(4) are not commensurate in scope. Section 119(c) deems a subsequent application properly transformed into a first application if the first-filed foreign application requirement set forth in the statute are met for any prior application(s) as of the filing date of the subsequent application. Article 4(C)(4), on the other hand, does not contemplate more than one prior application at a time. Thus, under Article 4(C)(4), the moment that two potential first applications are pending simultaneously, the right of priority attached to that subject matter has been lost.

The disconnect between Section 119(c) and Article 4(C)(4) creates a minefield for unwary patent practitioners. This paper offers strategies for litigators and prosecutors navigating these complexities.

The interpretation of Section 119(c) put forward in this paper reflects an intermediate reading of the section. A narrow reading of the section would more closely adhere to the literal language of Article 4(C)(4) and would not extend to intermediate applications, as Section 119(c) does. Viewed through a policy lens, a narrow interpretation of Section 119 is not only warranted but consistent with the doctrines and philosophy underlying our patent system. Accordingly, courts should take care to rigorously apply Section 119(c) and thereby harmonize national law with the international priority rules.

By Ellen Shamansky

BPLA 2018 Writing Competition The Cancer Immunotherapy Pilot Program (also known as Patents 4 Patients) provides fast-track review to patent applications describing methods of treating cancer with immunotherapy, such as chimeric antigen receptor (“CAR”)-T cell treatments. This article explores considerations for claiming CAR-T cell treatments, including court rulings and examiner guidelines on subject matter eligibility in the life sciences, the Federal Circuit’s decision in in 2017, and pending applications and current litigation over CAR-T cell treatments.