Update: The EPO has issued a statement confirming dismissal of the Patentees’ appeal and revocation of CRISPR patent EP2771468. The statement also confirms that no questions were referred to the Enlarged Board, perhaps prompted by incorrect reports elsewhere of a referral. The reasons for the decision will be issued in due course.
The Board of Appeal has today confirmed that the Opposition Division (OD) was correct in deciding that priority claims of CRISPR patent EP2771468 are invalid and therefore the claimed subject matter lacks novelty over papers published in the priority year. The Patentees’ appeal was dismissed and the OD’s decision to revoke the patent has become final.
This followed four days of oral argument with exciting twists and turns. At one stage, it looked almost certain that the Board would not decide the case this week and would instead refer questions to the Enlarged Board of Appeal (EBA) – the Board even stated that it was minded to do so. The Opponents objected strongly to this, suggesting that it could bring the EPO to a grinding halt due to the number of cases that might have to be stayed, pending a decision from the EBA (along with raising numerous other objections that a referral was not justified because, for example, the law was already settled). In the end, after further debate and deliberation, the Board concluded the questions concerning the interpretation of the law on formal entitlement to priority could be decided based on the existing law and case law, without referring questions to the EBA.
Fundamentally, the Patentees had argued that the EPO’s established approach to assessing formal entitlement to priority (requiring that every applicant for a priority application, or their successor in title, must be named as an applicant for the priority claiming application) was wrong. Therefore, by dismissing the Patentees’ appeal, the Board’s decision is in line with the EPO’s established approach. European practice on this point therefore remains the same. All applicants for a priority application or their successor(s) in title should be named on the priority claiming application at the date of filing.
This might not be the end of the story, however. During the oral proceedings, the Patentees objected to the decision of the Board not to refer questions to the EBA, arguing there had not been a discussion on the matter. It is therefore possible the Patentees may file a Petition for Review, on the grounds there has been a fundamental violation of the Patentees’ right to be heard. To bring such a Petition, an objection must be made during the appeal proceedings, which, possibly, the Patentees have done. The groundwork may therefore have been laid, although the Patentees didn’t explicitly reference a potential Petition for Review in the hearing. Petitions for Review are rarely successful at the EPO, but given the value of this patent, the Patentees might just consider it worth a go.
For further details on the background to this case, see our earlier notes here and here.
If you have questions about a priority claim or a more general query on priority at the EPO, please contact Jamie Atkins or your usual Kilburn & Strode advisor.