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The EPO’s Board of Appeal has dismissed an appeal against revocation of European patent EP2771468, belonging to The Broad Institute, Massachusetts Institute of Technology and President and Fellows of Harvard College, which covered the pioneering gene editing technology CRISPR. The patent had been revoked by the Opposition Division for lack of novelty following a finding of lack of priority. Priority was found to have been invalidly claimed because one of the inventor Applicants listed on the US provisional application was not listed as an Applicant on the subsequent PCT application.
In Europe, the right to claim priority is derived from Article 87 EPC, which reads:
“ (1) Any person who has duly filed … an application for a patent … shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.”
During the four-day hearing, discussions focussed on the proper interpretation of “any person” in Article 87(1) EPC. As part of these discussions the Board of Appeal considered whether entitlement to claim priority should be assessed by the EPO and the applicable law for interpreting “any person who has duly filed”. Although the Patentee called for questions to be referred to the Enlarged Board of Appeal, the Minutes confirm that the Board of Appeal refrained from making a referral because it considered itself competent to decide the appeal.
The full ramifications of the decision for The Broad Institute remain to be seen, but since its CRISPR technology is protected by multiple European patents it is thought that licensees will be largely unaffected. What is clear is that the Board of Appeal’s decision confirms the previously accepted principle that in order to be entitled to priority, all Applicants listed on a priority application must also be listed on a later application unless there is an intervening assignment because the right to claim priority cannot be divided or separated into multiple priority rights. Further discussion of the reasons behind the decision are expected to be included in the Board of Appeal’s written Decision, which is yet to be issued.