Enlarged Board significantly softens test for entitlement to priority

Enlarged Board significantly softens test for entitlement to priority

The EPO’s Enlarged Board of Appeal (EBA) has just handed down its decision in the consolidated cases G 1/22 and G 2/22 and set out what seems to be a significant, and surprising, softening of the EPO’s approach to assessing entitlement to priority. For background to the referral and a reminder of the specific questions put to the EBA, please see our earlier article here.
Firstly, the EBA has come to the decision that the EPO is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. What will be more surprising to many is that the EBA went further, and decided there is now a “rebuttable presumption” that the applicant claiming priority is entitled to do so. This means the EPO will now assume that entitlement to priority is valid, provided that the declaration of priority is made correctly under Article 88(1) EPC and the corresponding Rules.
In practice, this reverses the burden of proof for priority entitlement. Instead of the applicant/patentee needing to provide evidence that the priority entitlement is valid, the opponent (or EPO in pre-grant proceedings) must now provide “specific facts that support serious doubts” that the priority entitlement is not valid. According to the EBA, under the new standard, “the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing” (paragraph 110 of the decision).
This is a significant departure from recent case law, where objections concerning the entitlement to claim priority were common and the burden was on the applicant/patentee to show that priority entitlement was valid (often requiring them to show that a valid transfer of the priority right had occurred under the relevant national law).
The EBA has decided that transfer of priority rights should not be assessed under national law, but under the EPO’s autonomous law (which has no specific requirements for transfer of priority). As a consequence, the EPO should “adapt itself to the lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances” (paragraph 99 of the decision).
The EBA even goes so far as to indicate that the transfer of priority rights does not need to take place before the later application is filed, stating “if there are jurisdictions that allow an ex post (“nunc pro tunc”) transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards”.
This suggests that execution of a suitable nunc pro tunc assignment of the priority rights may now provide a route to retroactively “fix” the priority claim – although perhaps this will no longer be necessary given that priority entitlement will now be presumed to exist.
The EBA has also confirmed that “implied agreements” can be relied upon to transfer priority rights. This is particularly relevant in a situation in which a priority application is filed by Party A and a PCT application is jointly filed by Parties A and B (wherein the parties are applicants for different designated states). The EBA found that as long as there are not substantial factual indications to the contrary, both applicants can rely on the priority claim. The mutual filing of the PCT by A and B is deemed evidence of an “implicit agreement” allowing Party B to rely on the priority right established by Party A. This will be comforting to applicants who filed applications in the US prior to the America Invents Act, when it was common to file PCT applications in name of the inventors for the US designation. 

Call to action

This decision is clearly good news for applicants and patentees. The risk of priority being found to be invalid based on lack of entitlement to claim priority will now be significantly lower due to the rebuttable presumption that the applicant is entitled to claim priority. Many parties will perhaps not have expected the EPO to take such a pragmatic and decisive stance on this issue, but paragraph 101 of the decision highlights some of the motivations behind this decision. Harmonisation with national laws was key, as well as serving the underlying purpose of priority rights, namely “to facilitate international patent protection, by reducing the risk that the inventors’ (or their legal successors’) interest in obtaining patent protection in multiple jurisdictions is jeopardised by formal requirements they may inadvertently fail to meet.”
Applicants and patentees should seek advice from European counsel regarding any priority entitlement challenge they may be facing, to determine if this decision is of assistance and to consider the appropriate submissions to make in any pending oppositions and appeals.
On the other hand, if opponents are relying on a lack of formal entitlement to priority we recommend urgently reviewing their case and seeking to strengthen it in other areas, since the priority attack is likely to be significantly weakened by this decision. If opponents wish to proceed with their priority attack, they will need to find and submit evidence that the applicant is not entitled to claim priority. In practice this is likely to be difficult because assignment documents are usually under the control of the applicant, but the decision indicates that examples of parties acting in bad faith or disputes between the parties at the relevant date could also throw implied agreements into doubt. 

Get in touch

If you have questions about a priority claim or a more general query on priority at the EPO, please contact Abi Heath, Jamie Atkins or your usual Kilburn & Strode advisor.

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