Arguably the highest profile appeal at the EPO in recent years (T 0844/18) will be heard before the Board of Appeal in Munich on 13-17 January 2020. Kilburn & Strode Associate Jamie Atkins and Trainee Patent Attorney Claire Weston be there to report in real time. They will be updating our Twitter and LinkedIn social media feeds with the key takeaways over the course of the week.
Ahead of the hearing, here’s what you need to know.
How did we get here?
The history of the case in six bullets:
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A collaboration between The Broad Institute, Harvard, MIT and Rockefeller University led to the filing of multiple US provisional applications disclosing multiple CRISPR inventions.
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The inventors who contributed to an invention in a provisional application were named as applicants for that provisional application.
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Multiple PCT applications were filed claiming different CRISPR inventions disclosed in the provisionals and claiming priority from the relevant provisionals.
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The PCT application from which the patent of the appeal proceedings, EP2771468, is derived did not name as applicants all inventor-applicants of the provisional applications from which priority was claimed and the missing inventor-applicants had not assigned their priority rights to the named PCT applicants.
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The patent was opposed by nine parties and at first instance, the Opposition Division (OD) found that the priority claim was not valid, and as a result the claimed subject matter lacked novelty over papers published in the priority interval.
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The patentees appealed on the basis that the approach on priority entitlement followed by the OD was incorrect.
What is the issue to be considered at the hearing?
The Board of Appeal (“the Board”) will consider the following question:
"A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is this priority claim valid even without any assignment of priority right from B to A?"
The patentees say that the answer is yes, and therefore their priority claim is valid.
The opponents say that the answer is no, in line with current EPO case law and practice. This is referred to as the “all applicants approach” whereby every applicant for a priority application, or their successor in title, must be named as an applicant for the priority claiming application.
What are the patentees’ arguments?
The patentees have presented three main lines of argument:
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Entitlement to priority should no longer be assessed by the EPO – any challenge should be decided in entitlement actions before national courts. Reasons for this include (i) issues of title should not be capable of destroying the underlying property, (ii) other parts of EPO law provide the necessary “connection” between the applicants for the priority application and the later application, (iii) legal certainty for third parties is provided through the requirement that the later application relates to the “same invention” as the priority application.
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The term "any person" in Article 87(1) EPC and Article 4A(1) of the Paris Convention means that any one person who duly filed the priority application (or their successor in title) can validly claim priority. This is in line with the ordinary meaning of the word “any” (as opposed to “all”) and the object and purpose of the Paris Convention. Each applicant for the priority application should be allowed to exercise their right to priority individually. As the PCT application had applicants in common with the applicants for the priority application, the priority claim is valid.
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The determination of "any person" should be interpreted according to the national law of the first filing, in this case US law. Accordingly, only the inventor-applicants who contributed to the invention are “any person”. All contributing inventors/their successors in title were applicants for the PCT application. Therefore, the priority claim is valid.
The patentees have also asked the Board to refer questions to the Enlarged Board of Appeal if the Board does not agree with their arguments.
What is the Board’s preliminary view?
As discussed in our earlier note here, the Board issued preliminary comments on 4 November 2019. While the Board noted that current case law appears to favour the opponents, it also stated that there are some factors “possibly in favour of changing the present practice”. Could this hint at the possibility of an upset at the hearing for the opponents?
Why does it matter?
It matters to the parties (and e.g. licensees and potential licensees) because if the priority right is not valid, the claimed subject matter lacks novelty over some of the seminal CRISPR papers published between the priority date and the PCT filing date. The priority issue also applies to various other patents held by the patentees. In fact, the patentees stated in a request for acceleration of the appeal proceedings that the “outcome of the present appeal will directly affect the decision taken by [potential licensees] as to whether or not to take a license”.
It matters more generally, in that, if the Board follows an approach proposed by the patentees, it would represent a significant change to the way the EPO assesses formal entitlement to priority. While at first glance, removing the requirement for all applicants (or their successors in title) of a priority application to be named as applicants for the later application might seem like a welcome elimination of an administrative pitfall, the opponents have pointed to potential negative consequences of such an approach. One of these was summarised by the OD in the Decision under appeal:
“However, allowing each joint applicant, separately or in different combinations with other co-applicants, to file a patent application claiming priority from the first application would lead to a multiplication of proceedings with identical content. The OD cannot disregard that the logical consequences of this approach would run counter to the interests of patent offices and the public both in terms of procedural efficiencies and of avoiding multiplication of protections for the same subject-matter, having different patent owners”.
The opponents have also suggested that the “all applicants” approach protects the applicants for a priority application against one or more of those applicants filing and enforcing a priority claiming patent against the others.
Also, in some circumstances the “all applicants” requirement can actually save a priority claim. This might happen in the scenario where a still earlier application is discounted as being “the first application” for priority purposes because it includes an additional applicant who is not named in the priority claiming application (as in T 788/05). The opponents argue that if the “all applicants” requirement were removed, patents previously thought to be valid could become invalid and vice versa, leading to legal uncertainty.
Whatever the outcome, it will have important ramifications, and we will be there to bring you the news as it happens.
Don’t hesitate to email Jamie if you would like to discuss any queries relating to this article or CRISPR in general.