Following its decision in January 2020 to uphold the Opposition Division’s decision to revoke CRISPR patent EP2771468 (reported here), the Board of Appeal recently issued its written reasons for that decision. As expected, the Board endorses the EPO’s long standing “all applicants” approach i.e. all applicants for a priority application (or their successors in title) should be named on the priority claiming application at its date of filing. The Board also explains why no referral to the Enlarged Board of Appeal was necessary. In this case, the application of the “all applicants” approach meant that crucial priority claims were invalid, resulting in an uncontested lack of novelty over intervening prior art. The EPO’s press release summarising the decision can be found here.
While no appeal of this decision is possible, as discussed in our earlier note, the Patentees could file a Petition for Review by the Enlarged Board of Appeal.
In the meantime, here are some practical tips to avoid losing priority based on the “all applicants” approach endorsed by the Board:
If there’s any doubt about whether a transfer of priority right has taken place, include all applicants for the priority application as applicants for the later application. Assignments to the desired applicants can be completed after filing. Doing this at the IB during the international phase is the most efficient way.
Before filing the later application check for any assignments away from the priority applicants in case there are any other applicants that should be named as applicants for the later application.
If relying on an assignment, identify the priority application number, filing date and country, and explicitly state that the right to claim priority is assigned. Have the assignment executed by the assignor and assignee and dated before the filing date of the later application.
If the application was filed in the wrong name, is there evidence that the intention was to file in the name of the “correct” applicant? Bear in mind the requirement to make the correction “without delay” and balance with the risk that the requested correction may not be successful and could draw attention to a potential priority issue.