Yes, what does EALNRO mean? It means “expressly abandoned leaving no rights outstanding”. And why is that phrase important?
That phrase is important because it appears in Article 4 of the Paris Convention for the Protection of Industrial Property. The idea is that you can restart the clock (the six-month clock for designs, or the 12-month clock for utility inventions) by expressly abandoning an erstwhile priority application leaving no rights outstanding. The precise wording is:
A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
We call these Bob-Armitage-style abandonments because it was he, during his years in the pharma industry, who popularized the widespread use of EALNRO serial abandonments.
If you didn’t already know about this, then you will want to print out your own copy of Bodenhausen’s book Guide to the Application of the Paris Convention.
So let’s talk through his approach.
His typical fact pattern was the biotech or pharma company that has found a molecule or substance. Maybe a material from a boot scraping from somebody who came back from a jungle somewhere. The idea is that maybe the company only has a vague guess what the molecule might be good for. But nonetheless a provisional patent application gets filed.
Next thing you know, eleven months have passed, the company has maybe a slightly better guess what it might be good for. Restores hair loss maybe? Another provisional gets filed. The previous provisional was previously EALNRO. This restarts the 12-month priority period.
Next thing you know, another eleven months have passed, turns out the molecule doesn’t help with hair loss after all. Latest thinking is maybe it will serve as a pigment in nail polish. A third provisional gets filed. The second provisional was previously EALNRO. This restarts the 12-month priority period yet again.
Another eleven months pass, sure enough it’s a dandy pigment. Scores very well on a figure of merit that is ratio of glitter to weight or something like that. Time to file that PCT application. We claim priority only to the third provisional.
That’s the Bob Armitage approach.
Back when Bob was cluing practitioners in to this part of the Paris Convention, it was before the US joined the PLT. And it was before the PCT system implemented Restoration of the Right of Priority. So back in those old days, once a 12-month period had passed from the filing of a US provisional, you could sort of figure that no rights were still outstanding. If you were to have filed an express abandonment, and then if you were to allow 12 months to pass, you could take the position that maybe no rights were still outstanding. Some practitioners would even take the position that merely allowing the 12 months to pass all by itself counted as an abandonment leaving no rights outstanding.
Now that we have PLT and ROROP, there is a two-month stretch of time that lasts until 14 months after the filing date of the provisional application, during which some rights might still be outstanding.
This leaves the alert reader wondering, what exactly counts as “leaving no rights outstanding”? And there are as many answers as there are Offices of Second Filing under the Paris Convention. You would want to obtain advice of competent counsel in the location of interest, to find out what counts as “leaving no rights outstanding” under the patent law of this country or that country.
Bob has kindly consented to letting me provide these online items:
- American Inventors Protection Act of 1999, which is a 100-page slide deck, and
- Provisional Priority Practices, Prior Art Patents, Published Applications for Patent & Related Matters Arising From The American Inventors Protection Act of 1999, which is a 51-page paper.
Bob modestly characterizes these documents as being merely of historical significance. These documents serve as an exegesis of major aspects of the AIPA, and they do much to help the reader more fully appreciate US provisional applications and Article 4 of the Paris Convention.