At the beginning of October, the Netherlands Patent Office got a question. How is it possible that COVID-19 is in the title of a patent publication with a priority date from 2015? After all, COVID-19 did not exist at the time the patent was applied for. This is a great question as it deals with priority, families and Espacenet.
To start off, let us look at Espacenet, the online patent database. It contains over 110 million patent documents. These documents have a lot of numbers and dates.
Image of part of a document with the data for *US2020279585A1 'System and Method for Testing for COVID-19'. It has various tabs:
- Bibliographic data tab with the data: applicants, inventors and priorities;
- Description tab;
- Claims tab;
- Drawings tab;
- Original document tab.
The Bibliographic data tab is open. It shows the data:
- Applicants: 'ROTHSCHILD RICHARD [GB] +';
- Inventors: 'ROTHSCHILD RICHARD [GB] +';
- A black dotted line;
- Priorities: 'US201562240783P·2015-10-13; US201615293211A·2016-10-13; US201715495485A·2017-04-24; US201916273141A·2019-02-11; US201916704844A·2019-12-05; US202016876114A·2020-05-17'.
Imagine that you have applied for a patent in the Netherlands for a method that allows you to diagnose patients remotely. You filed the patent on 31 October 2019. This is the application date. If the patent is granted, it is valid for a maximum of 20 years from that application date.
Smaller and startup entrepreneurs only apply for a patent in the Netherlands, to begin with. As an entrepreneur, you often do not know right away whether you want to apply for a patent in other countries. Sometimes the technology needs to be developed further. Also, patent applications are costly. Still, what happens if you decide to file a European patent application?
Priority year, application, and date
In some cases, when filing a European patent application, you may want some extra time to think about your international plans. In the meantime, you do not want another party to file a patent application that could affect the novelty of your patent. In these cases, the priority year can help. The priority year is the 12 month period following your first application.
If you decide to file a European application for the same diagnostic method during this year, you can claim priority for the Dutch (NL) patent application. This means that the priority date is the start date of the European patent (EP).
In our example, the priority year is from 31 October 2019 to 31 October 2020. The first application date (31 October 2019) is the priority date. You decide to file for the patent on 1 June 2020, during the priority year. This EP patent will be valid from 31 October 2019 instead of 1 June 2020. This gives you more time to think about your plans without the risk of losing your patent to someone else.
Image of the European patent procedure. The image shows the following:
Blue line/arrow means 'Application pending’;
Green line/arrow means 'Granted';
Blue and green line/arrow above each other means 'Parallel procedures';
Blue cross means 'Application may be rejected';
Green cross means 'Patent may be revoked by the court’.
The 'Confidentiality' icon, with the description 'Keep the invention secret for the patent application'.
The 'NL Application' icon, with the description 'The filing date with the Netherlands Patent Office is the reference point for assessing the novelty and inventiveness'. It continues with the blue arrow (Application pending) to:
The 'Examination' icon (5-9 months) with the description 'Evaluation of novelty, inventiveness and industrial applicability'. It continues with the blue arrow (Application pending) to:
The 'Priority year' icon (12 months) with the description 'Expanding from the Netherlands to the European procedure can only take place within the priority year'. It continues with the blue arrow (Application pending) to the European procedure icons, which will be discussed later in the image and:
The 'NL granting + publication' icon (18 months) goes with the green arrow (Granted) with a green cross in between (Patent may be revoked by the court) to:
The 'NL annual fees’ (4-20 years) goes with the green arrow (Granted) to:
The Icon 'Maximum duration' (20 years).
A blue arrow (Application pending) goes from the ‘NL Application’ icon to the ‘European procedure’ icon with the description 'Expansion from the Netherlands to the European procedure can only take place in the priority year'. The blue arrow continues, with a blue cross in between (Application may be rejected), to:
The 'European fees' icon (after 4 years) with the description 'Fees to be paid until granted'. The blue arrow (Application pending) goes to:
The 'Granting of European patent' icon (around 5 years) goes with a green arrow (Granted) and a green cross in between (Patent may be revoked by the court) to:
The 'European countries selected' icon, with the description 'Validation in the countries within the European Patent Convention chosen by the applicant', continues with a parallel (Parallel procedures) green arrow (Granted) to:
The 'Fees per country' (as of granting) icon with the description 'If the fee per country is not paid, the patent will expire in that country' continues with a parallel (Parallel procedures) green arrow (Granted) to:
The 'Maximum duration' icon (21 years) is defined as 'Maximum duration is 20 years after submission of European procedure (with priority year up to 21 years)'.
Simple patent families
Before we answer the COVID-19 question, there is one more term we need to explain: the patent family. Going back to our example, your NL and EP application describe exactly the same invention. Also, you may have chosen to submit an American (US) and Australian application (AU). This means you have 4 applications that describe the same diagnostic method. And all publications accompanying the application are all linked together by the Dutch priority application from 31 October 2019. Together, all those publications are a simple patent family (‘Smalle octrooifamilie’ in Dutch, in the image below).
You can find that simple family in the Espacenet patent database under 'Published as'. Besides publications from national patent offices, such as NL, US and AU, you will often see publications for the most common international application routes. These routes are WO, which is the international PCT application, and EP, the European application. And all those publications are about exactly the same invention.
Image of a Simple patent family: this is a random publication where a patent has been applied for in many different countries. The image shows that the simple patent family has been published (referred to as 'Published as') as:
AT513318T; AU2006214859A1 (this number is highlighted); AU2006214859B2; AU2006214860A1; BRPI0607749A2; CA2598038A1; CA2598038C; CA2598062A1; CA2598062C; CN101138100A; CN101138100B; CN101840077A; CN101840077B; EP1854150A2; EP1854150B1; EP1854151A2; EP1854151B1; JP2008530766A; JP2008536953A; JP4986865B2; JP5069570B2; KR101287816B1; KR20070120956A; RU2007134438A; RU2397574C2; US2009027872A1; US2009044861A1; US8475033B2; US8530740B2; WO2006088369A2; WO2006088369A3; WO2006088370A2; WO2006088370A3.
The COVID-19 publication
This patent application has not yet been granted for the remote diagnosis of COVID-19 in patients. In Espacenet, these types of priority applications are listed under 'priorities'. Still, the publication lists 5 priorities. This is because priority applications are quite complex.
Extended patent families
Priority applications are also used in other situations. In some countries, for example, it is possible to submit an application with changes based on a current application. Or you can combine a part of a pending application with a new technical addition. In these cases, priority only applies to the part of a previous application that has not changed. The United States is one of the countries where this is possible.
The COVID-19 patent application is the result of many US applications. All of these are partly linked by many priority applications. These applications also include new and changed parts. The inventions in these publications are similar but not exactly the same. This is called an extended patent family ('Brede octrooifamilie' in Dutch, in the image below). 'Priorities' shows all priority applications in the extended patent family. The whole family can be found under the tab 'Patent family' / 'INPADOC family'.
Image of a document with the following data:
Applicants: 'ROTHSCHILD RICHARD [GB] +';
Inventors: 'ROTHSCHILD RICHARD [GB] +';
IPC 'G06K9/00; G11B27/031; G11B27/10; G16H40/63; H04N5/76;'
CPC 'G06K9/00892 (US); G11B27/031 (US); G11B27/10 (US); G11B27/102 (US); G16H40/63 9(EP,US); G16H40/67 (EP)';
Priorities: 'US201562240783P·2015-10-13; US201615293211A·2016-10-13; US201715495485A·2017-04-24; US201916273141A·2019-02-11; US201916704844A·2019-12-05; US202016876114A·2020-05-17'. The data is surrounded by a black dotted line with the description 'Extended patent family of the COVID-19 publication';
Answer to COVID-19 question
So why is COVID-19 mentioned in a patent publication with a priority date from 2015? It is because one part of the COVID-19 publication is from older priority applications. These older applications deal with remote diagnostics. The diagnosis of COVID-19 is the new addition mentioned for the first time in the application from 17 May 2020. The priority application from 2019 does not mention COVID-19.
Patents are challenging
The way priority dates and patent families are shown in patent databases can be confusing. Still, if you search the patent databases, you will find more publications mentioning 'COVID-19' with dates before 2020. This format is very common.
Find out more
If you would like to find out more about patent procedures and strategy, please visit our webpage Patents & other IP rights.