High Priority: New Enlarged Board of Appeal referral on legal entitlement to priority (G 1/22 and G 2/22)

High Priority: New Enlarged Board of Appeal referral on legal entitlement to priority (G 1/22 and G

We recently reported on an expected new referral to the Enlarged Board of Appeal on a point of priority entitlement, for consolidated appeals T1513/17 and T2719/19. A referral has now been made. The outcome could have far-reaching implications for the assessment of priority entitlement at the EPO.

The referring Board’s decision is here. The questions referred to the Enlarged Board are:

I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be successor in title as referred to in Article 87(1)(b) EPC?
​II. If question I is answered in the affirmative:
Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC in the case where:

  1. a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and

  2. the PCT-application claims priority from an earlier patent application that designates party A as the applicant and

  3. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?


Why were these questions asked? 

Question II is very much focussed on the specific priority issue arising in these appeals. It relates to whether priority is valid, where the priority-entitled applicant was the applicant for the US-only on the PCT application from which the European cases are derived. In other words, this is asking: is the priority claim valid in a European application derived from a PCT application if the priority-entitled applicant is an applicant for the US only, and another applicant, who does not hold a priority right, is the applicant for Europe? This scenario is most common in PCT applications filed before the America Invents Act, when US provisional applications were filed in the name of inventors and inventors were routinely named as applicants for the US. This issue is discussed in detail in our previous article and in reasons 27 to 42 of the decision

Question I, however, has much broader implications since it asks whether the EPO has the power to assess whether a party is a “successor in title” in the sense of Article 87 EPC. Article 87(1) EPC requires that, to be entitled to priority, the later application must be filed by the applicant for the earlier application, or by their successor in title. According to current practice, the EPO does assess this where it is relevant to priority entitlement.

At first glance, the relevance of Question I to Question II may not be clear, since Question II doesn’t mention anything about a successor in title. However, it appears that the referring Board’s view is that priority could be valid in the scenario described in Question II, if there has been transfer of the priority right to party B (the EPC applicant) for the EPC territory i.e. B is a successor in title to the priority right. The referring Board goes on to suggest that the filing of the PCT itself jointly by A and B could provide evidence of an implicit agreement to transfer the priority right for the EPC territory to B:

In that case it could be argued that the mutual filing of a PCT application by parties A and B, wherein party B is named as the applicant for the EPC territory and party A (who is entitled to the priority right) is named as the applicant for the US, demonstrates - absent indications to the contrary - the existence of an implicit agreement between party A and party B, conferring on party B the right to benefit from the priority for the EPC territory. This implicit agreement could possibly be sufficient to bring about the transfer of the priority right to party B for the EPC territory”.

What are the potential implications? 

Accepting PCT filing as evidence of an implicit agreement to transfer the priority right could represent a softening of the EPO’s strict approach to assessing the transfer of priority rights. Under current practice, the transfer is assessed according to national law and detailed evidence of the national law must be provided by the party relying on that law. There is however no settled approach as to which national law is the correct law for the assessment. The referring Board suggests that the Enlarged Board could provide some clarity here.

A potential issue with the approach suggested by the referring Board is that it is well established that the transfer of a priority right to a successor in title must take place before the later application is filed. If the filing of the PCT itself is accepted as evidence of an implicit transfer of the priority right, is it evidence that the transfer happened before the PCT was filed?

Assuming that the Enlarged Board confirms that the EPO does have jurisdiction to determine whether a party validly claims to be a successor in title (i.e. answers “yes” to Question I), it will be interesting to see how extensively they look at the requirements for a valid transfer of the priority right. There is an opportunity to provide some much-needed clarity on an issue that is relevant in a large number of European cases. However, the Enlarged Board may find a way to confine itself to focusing specifically on the issue in Question II without going into the broader questions around the requirements for a valid transfer of the priority right.

This referral is likely to affect a large number of pending cases, particularly in view of the breadth of Question I and because attacking legal entitlement to priority has become increasingly common in oppositions at the EPO. We look forward to the Enlarged Board weighing on these critical issues and will keep you updated.

Get in touch

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

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