G 1/22 and G 2/22: EPO Publishes Decision on the ‘Implied Transfer’ Approach for Claim Priority

The Enlarged Board of Appeal answered two questions in these two G decisions:

  1. The EPO is competent to determine whether a party is entitled to claim priority under Article 87(1)EPC.
  2. That an ‘implied transfer’ approach may be taken for priority claims – for a priority claiming PCT application filed by applicants A and B, there is a rebuttable presumption that there is an implicit agreement between the applicants that priority may be claimed.

Does this open the door to a more relaxed approach to priority claims at the EPO?

If you have any questions about these decisions, please do get in touch.

Practical situations where priority claims may be at issue

When challenging a European patent, such as through Third Party Observations or Oppositions, contesting a priority claim may provide a potential attack. Errors in priority claims are not generally possible to correct retrospectively. For example, if the applicant of the priority document and the applicant of the later filed priority claiming application are different, then there may be an invalid priority claim. If the claim to priority is lost, then additional disclosures may be citable as prior art. This could result in a patent being found to lack novelty or inventive step on the basis of the newly citable prior art. Thus, it is important to ensure that priority claims are valid upon filing of the later priority claiming application – if not, it could be fatal for the eventual patent.

Technical Boards of Appeal of the EPO have previously decided on two potential priority issues:

The ‘joint applicant’ approach – T 1933/12

A priority application is filed by applicant X.

A later priority claiming application is filed by joint applicants X and Y. 

The Board found that joint applicants X and Y can validity claim priority to the priority application that was filed by applicant X only.

The ‘all applicants’ approach – T 844/18

A priority application is filed by joint applicants X and Y.

A later priority claiming application is filed by applicant X only. 

The Board found that sole applicant X cannot validity claim priority to the priority application that was filed by joint applicants X and Y.

The issue becomes more complicated when a PCT application has different applicants for different counties. For example:

A priority US application is filed by X.

A later priority claiming PCT application has X as an applicant for the US designation and Y as an applicant for all other designations. 

Does Y have the right to claim priority from the US application, and in all designations? Does this become more complicated if any of the applicants are also inventors?

This was the subject of the recent G 1/22 and G 2/22 decisions.

G 1/22 and G 2/22 Background

European patent No. EP1755674 (European patent application No. EP05779924.9) stems from PCT application (PCT/US2005/017048). The PCT application claims priority from US application (US60571444).

The US application had inventors Ai, Aii and Aiii as joint applicants. 

The PCT application had Ai, Aii and Aiii as applicants for the US designation and Company B as an applicant for the remaining designations. When the PCT application was filed, there was a registered assignment from Ai to B. There was no assignment registered for Aii and Aiii.

EP1755674 was revoked by the Opposition Division for lack of novelty. 

This revocation was on the basis of an invalid priority claim. The Opposition Division found Company Bs priority claim to be invalid as the right to claim priority had not been transferred from Aii and Aiii to Company B.

The examination division came to the same decision on a corresponding divisional application.

The revocation of EP1755674, and the refusal of the divisional application, were appealed (T 1513/17 and T 2719/19). The appeal cases were referred to the Enlarged Board of Appeal in G 1/22 and G 2/22.

G 1/22 and G 2/22 Decisions

Two questions were referred to the Enlarged Board of Appeal

  1. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
  2. 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?

The first question was answered in the affirmative – the EPO does have jurisdiction to determine whether a party validly claims to be a successor in title for a priority claim. 

That said, this does not prevent national courts in EPC member states and the Unified Patent Court also having jurisdiction in applicable situations. In these situations, such courts may come to a different decision.

For the second question, the Enlarged Board of Appeal considered whether the ‘joint applicant’ approach could be extended to PCT applications which have different applicants for different designations. The Enlarged Board of Appeal left this question open, and so did not confirm whether the ‘joint applicant’ approach would be a valid approach in this situation.

Instead, the Enlarged Board of Appeal assumed an ‘implied transfer’. This approach allowed the applicant subject to the decisions of T 1513/17 and T 2719/19 (Company B) to validly claim priority from the earlier US application.

The Enlarged Board of Appeal found that the joint filing of a PCT application by applicants Ai, Aii, Aiii and B could be taken – ‘absent indications to contrary’ – ‘the existence of an implicit agreement’ between applicants Ai, Aii, Aiii and applicant B, ‘conferring on applicant B the right to benefit from the priority for the EPC territory’.

In giving reasons for this Decision, the Enlarged Board of Appeal notes that ‘the legal system to be applied to assess the priority right is solely the EPC’ and that ‘it seems that the EPC does not, in Article 87 EPC or elsewhere, impose any formal requirements for the transfer of the priority right by agreement’. Put another way, an informal or implicit agreement forming the basis for a transfer priority may be permitted under the EPC. Thus, this gives the basis for an ‘implied transfer’ to be permitted for a valid claim to priority under the EPC.

What can be taken from this is that for a priority claiming PCT application filed by applicants A and B, there is a rebuttable presumption that there is an implicit agreement between A and B that priority may be claimed from an application in which one of A and B are an applicant.

It seems that this Decision may also apply to non-PCT applications, where the respective applicants of the priority application and the priority claiming European application are not identical. As the Enlarged Board of Appeal has left non-PCT situations open, it looks likely that the case law in this area will develop over time.

Contact

Ollie Stocks

oliver.stocks@slingsbypartners.com

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