Prioritising the Priority Claim

Prioritising the Priority Claim

The Board of Appeal (BoA) recently issued its preliminary comments in preparation for Oral Proceedings in, arguably, the most high profile appeal at the EPO in recent years (T 0844/18). 
The only issue for the Oral Proceedings is whether the priority claim of the patent, namely EP2771468 is valid.  Patent EP2771468 is one of the early foundational CRISPR cases, jointly held by the Broad Institute, MIT and Harvard.  In a Decision in March 2018, the Opposition Division (OD) found that the priority claim is not valid and revoked the patent for lack of novelty.  The Patentees appealed the OD Decision and the Oral Proceedings before the Board of Appeal on this critical issue are scheduled for 13-17 January 2020.
The outcome of this Oral Proceedings could significantly change the patent landscape at the EPO. 
The BoA succinctly summarised the fundamental question to be decided as follows:
"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 appellants say that the answer is "yes" and the respondents that it is "no"”.
The BoA notes that current case law and the law of some national tribunals favours the Opponents’ (respondents’) positions.  The Patentees (appellants) need to persuade the BoA that the current practice of the EPO is incorrect, and that a new, more applicant-friendly approach should be adopted.
The Patentees have the following three lines of argument:

  1. Entitlement to priority should not be assessed by the EPO – any challenge should be decided in entitlement actions before national courts.

  2. The term "any person" in Article 87(1) EPC means that any one person who duly filed the priority application (or their successor in title) can validly claim priority.

  3. The determination of "any person" should be interpreted according to the national law of the first filing, in this case US law.

The comments from the BoA suggest that they are currently not inclined towards arguments 2 and 3:
“…the term “any person” is ambiguous, rendering attempts to elucidate the meaning of these provisions upon purely linguistic basis difficult and most unlikely to be successful

The Board is of the view that the EPC provides a complete system for determining whether a priority right has been correctly claimed.  This issue is resolved by the EPO without reference to the national law of the place of original filing, or any other national law”.
Although the BoA notes that there are various factors which favour sticking with the established practice of the EPO in this area (for example, the fact that it is long standing), the BoA also states that there are some factors “possibly in favour of changing the present practice”.   This seems to offer a glimmer of hope to the Patentees that the BoA could be persuaded at Oral Proceedings to rule against the prevailing case law.
Finally, we note that the Board has not ruled out the possibility of a referral to the Enlarged Board of Appeal on the priority issue, stating that it will reach a view on this at the Oral Proceedings in January. 
Whatever the outcome, EPO case law will be made and we will be at the Oral Proceedings to watch this critical debate. 
Stay tuned for further updates.  In the meantime, 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.

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