Insights: Priority following consolidated cases G1/22 and G2/22

The Enlarged Board of Appeal’s recent decision in consolidated cases G1/22 and G2/22 has greatly simplified the consideration of priority entitlement at the EPO.

A review of the validity of a priority claim is an essential step in the preparation of an EPO opposition. The claim can be considered in two ways. Firstly, the Opponent can consider whether the priority application discloses the same invention as that claimed (and indeed whether the priority application was the first filing of that subject-matter). Secondly, the Opponent can review whether the formal requirements for a valid priority claim have been met, typically in relation to transfers between an original applicant of the priority application and a subsequent applicant of a priority-claiming application.

The Enlarged Board’s decision in G1/22 and G2/22 concerns the second of these issues. More fundamentally, the Enlarged Board’s decision considers whether the EPO even has jurisdiction to consider these formal aspects of the entitlement to claim priority.

Questions

The questions considered by the Enlarged Board were the following:

I. 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?

II. If question I is answered to 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?

The first question

The Enlarged Board first considered the question of whether the EPO has jurisdiction to consider the validity of priority claims when the applicant differs from the applicant of a first filing from which priority has been claimed.

There is no explicit indication in the European Patent Convention as to the EPO’s competence to decide on this aspect of priority. The Enlarged Board noted that the EPC did, however, include an explicit prohibition of the examination of the entitlement to the invention. Under Article 60(3) EPC, the Applicant is assumed to be entitled to the invention, and so the consideration of entitlement is a matter for national courts only. It was therefore considered whether such a prohibition should apply to priority claims by analogy.

The Enlarged Board reasoned that the prohibition of Article 60(3) EPC could only apply to priority claims if there was a gap in the law to be filled, whereas the Enlarged Board concluded that the drafters of the EPC intentionally left open the question of whether the EPO would be competent to consider entitlement to claim priority. As such, the Enlarged Board found that the EPO is therefore free to examine all aspects of the priority claim.

Importantly, the Enlarged Board did not stop there. The Board then went on to clarify how entitlement to priority should be considered.

Recognising that the right to claim priority and the right to be granted a patent for an invention are different rights, the Enlarged Board noted that the connection between these rights is considered differently in different jurisdictions. For example, German law considers the priority right to be independently assignable, whereas in England and Wales, there is usually an implication that the transfer of title to the invention also transfers the priority right.

The Enlarged Board also noted that there are formal requirements for priority claims (e.g., the filing of a certified copy of the priority application) that would not be possible in many cases if there was not an agreement between the present applicant and the party that filed the priority application.

In view of these points, and applying the principle that the EPO should not apply higher standards to the question of entitlement to claim priority than national laws, “the Enlarged Board comes to the conclusion that entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the applicant claims priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations”.

That is, the Enlarged Board concluded that there is a presumption of entitlement to claim priority. The presumption is rebuttable but involves the reversal of the burden of proof; i.e., the burden of proof is on the party challenging the priority claim. The Enlarged Board also noted that the presumption of entitlement to claim priority is strong. This means that the party challenging the priority claim cannot merely raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to priority.

The second question

The Enlarged Board indicated that the presumption of entitlement to claim priority would apply to the particular cases in question, as it would to all other cases where there is a difference in applicants. Furthermore, the Enlarged Board went further and said that there was an implied sharing of the right to claim priority in the cases in question.

The cases in question both related to a situation where a USA priority application named the inventors as applicants, and a subsequent PCT application named the inventors as applicants for the purposes of the USA only and named different applicants for all other states.  The Enlarged Board generalised such cases to decide that a joint filing of a subsequent application implied that the applicants of the priority/subsequent application consent to the new applicants enjoying the mutual benefit of the priority claim. This applies not only to PCT applications, but also to direct European applications.  This implied sharing of the right to claim priority of course confirms the presumed validity of the priority claim for these cases.

The Enlarged Board also noted that if one or more applicants from the priority application was not named as an applicant in the subsequent application, then there would not be an implied sharing of the right to claim priority to the new applicants. However, the presumed validity of the priority claim will apply.

The cases in question are of limited use as they relate to old PCT applications that were filed naming the inventors as applicants for the purposes of the USA. Since the America Invents Act of 2011 removed the need to name the inventors as applicants on USA applications, it is rare for a PCT application to be filed naming inventors as applicants for the purposes of the USA only. Hence, the principle of an implied sharing of the right to claim priority will not apply to most recent PCT filings. Nevertheless, the principle of assumed entitlement to claim priority will apply.

Conclusions

In answering the questions, the Enlarged Board found the following:

I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.

II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).

III. In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.

Summary

The situation for applicants at the EPO is now simplified and the risks of opposition challenges to the right to claim priority much lessened. While an opponent may challenge the right to claim priority, they must now demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to claim priority.

However, it should be remembered that the requirements for a valid claim to priority remain as they always have been, and the Enlarged Board’s decision relates solely to the level of investigation to be carried out by the EPO. To ensure that the EPO’s presumption of a valid priority claim can be demonstrated to be correct in the event that it is ever tested by a court, it remains good practice to have in place the appropriate documents that show the correct chain of title and transfer of priority rights. Furthermore, while this new decision questions the existing requirement that an applicant’s right to claim priority must be acquired before filing the priority-claiming application, it does not provide any explicit precedent that would definitely remove this requirement. So, relying on an assignment of the right to priority (whether separate or as part of an assignment of entitlement to the patent) made after the filing date of the subsequent application looks risky. It remains best practice to ensure such appropriate documents are in place before filing any priority-claiming applications.