The referred questions
They can be summarised as follows
- 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 Art 87(1,b)?
- Is the “joint applicants approach” valid for EP applicants also valid for PCT “joint applicants”?
Admissibility of the referral
Both questions are admissible, even if Question I was rephrased, see below.
In the referral, questions of law are touched upon, such as the extent of the EPO’s jurisdiction for questions of civil law or the right of a third party to challenge entitlement to priority rights to which the third party cannot claim any entitlement.
Summary of the answers
The answers of the EBA can be summarised as follows:
- Yes but, whereby the “but” implies a change of paradigm.
The right to a priority under Art 87 can be assessed by the EPO.
The autonomous requirements for the valid transfer of priority rights should however not be stricter than national rules applicable to the transfer of priority rights or other property rights.
For the EBA, entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the subsequent applicant claims priority in accordance with Art 88(1) and the corresponding Implementing Regulations.
The presumption is rebuttable, but only in rare exceptional cases.
2. Directly No, but Implicitly, and in view of the answer to Question I Yes
Question I – EPO’s jurisdiction to assess the validity of a priority
Question I was rephrased as follows: “Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) EPC?”
The “same invention” criterion of Art 87(1) is often referred to as “substantive priority” or “substantive validity of the priority” and has been dealt with in G 2/98 and G 1/15
The present referral concerns the question whether the applicant of a later application is entitled to claim the priority of an earlier application, in particular as a successor of the applicant of the priority application and is often referred to as “formal priority” or “formal validity of the priority”.
The EBA reminded that the purpose of the priority right is to protect an applicant from its own intermediate prior art and allows it to publish the content of the priority application before the subsequent applications are filed.
Assessment by the EPO of entitlement to the right of priority
In most of the cases where the boards had to assess whether the applicant of a subsequent application was entitled to claim priority under Art 87(1), the boards tacitly assumed that they had jurisdiction for such assessment. This was the case in T 844/18 and confirmed in T 2431/17.
An opposite view was just sketched in a communication of the board in T 239/16. In the positions taken in the amicus curiae briefs and by the different positions taken by the two opponents in the inter partes case underlying this referral, there was more widespread scepticism concerning the EPO’s jurisdiction for determining entitlement to priority.
According to consistent case law, national law is applicable to the succession in title addressed in Art 87(1). In T 1201/14 various possibilities were envisaged.
It has been deduced from the wording of Art 87(1), without reference to national law, that the transfer of the right of priority has to have been concluded before the filing of the subsequent European patent application, cf. T 1201/14, T 577/11, and T 1946/21. The requirement that the right of priority has to be transferred before the filing of the subsequent application can be described as a requirement based on autonomous substantive law under the EPC.
In proceedings before national courts, conflict of laws issues and the related application of foreign law tend to cause less concern than in proceedings before the EPO.
A clear distinction should be made between the title to the subsequent application and the priority right, i.e. the right to attribute the date of the priority application to this application. Only the transfer of the priority right is relevant for the proceedings before the EPO for the purposes of Art 87(1).
Art 60(3) is not applicable when assessing the validity of the right to priority
In proceedings before the EPO, the applicant shall be deemed to be entitled to exercise the right to the European patent, cf. Art 60(3). The EPO has no power to decide a dispute as to whether a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application. After grant, the national courts are competent to decide on disputes on the title to the European patent for each of the designated Contracting States.
As far as the title to the priority application is concerned, Article 60(3) EPC is not directly applicable, unless the priority application is a European application. The EBA concluded that the drafters of the EPC intentionally left open the question of the EPO’s competence to decide on the priority entitlement. Consequently, there is no lacuna in this respect that could be filled by an application by analogy of Art 60(3).
The filing of a first application may be seen as the creation of a bundle of potential priority rights that come into existence and may be examined only when they are invoked in a subsequent application.
For the subsequent application, priority rights are governed exclusively by Art 87 to 89. This is a significant difference to the title to a European patent application or patent, which depends upon national laws.
The entitlement to claim priority, and any related assignments of priority rights, is to be assessed under the autonomous law of the EPC
If the EPO was barred from assessing priority entitlement, situations could arise in which the EPO has evidence potentially affecting the patentability of an invention but cannot use such evidence in its decision on patentability. Disputes on the entitlement to the patent, on the other hand, do not affect the EPO’s findings on the patentability of the invention and the evidence and assessments underlying such findings, such as the EPO’s determination of the relevant prior art.
The impact of national rules on the transfer of priority at the EPO
The autonomous requirements for the valid transfer of priority rights should not be stricter than national rules applicable to the transfer of priority rights or other property rights.
In most jurisdictions, rights to obtain a patent can be transferred without any written agreement or other formalities, e.g. from an employee inventor to the employer who wishes to obtain patent protection in multiple territories. The right to priority automatically follows the title to the subsequent patent application in many jurisdictions and may thus also be transferred informally.
For the EBA, the EPO should adapt itself to the lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances.
For example, the autonomous law of the EPC should not require that the assignment of priority rights has to be in writing and/or has to be signed by or on behalf of the parties to the transaction since this would establish a high threshold in view of the national laws. Even the requirement that the transfer of the right of priority needs to be concluded before the filing of the subsequent European patent application is questionable in the EBA’s view.
If there are jurisdictions that allow an ex post (“nunc pro tunc”) transfer of priority rights, the EPO should not apply higher standards.
Rebuttable presumption of entitlement to claim priority
For the EBA, it must be assumed that the priority applicant who has not acquired the right to the subsequent application accepts or at least tolerates the use of the priority by the subsequent applicant.
The EBA noted that the applicant of the subsequent European application must provide documentation that cannot normally be obtained without the cooperation of the priority applicant.
The formal requirements for claiming priority in accordance with Art 88(1) can only be met by the subsequent applicant if the priority applicant provides the necessary support completely and in time. The fulfilment of these requirements can thus be seen as strong factual evidence of the priority applicant’s approval of the subsequent applicant’s entitlement to priority.
The EBA came 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 Art 88(1) and the corresponding Implementing Regulations.
The presumption also applies if the title to the subsequent application has not been acquired from the priority applicant but from a third party having the right to the invention in the respective territory.
It does not matter whether the subsequent European application stems from a PCT application. It is also not relevant whether and to which extent the members of a plurality of co-applicants for the priority application overlap with the group of co-applicants for the subsequent application.
The presumption should be rebuttable since in rare exceptional cases the priority applicant may have legitimate reasons not to allow the subsequent applicant to rely on the priority. Such circumstances could, for example, be related to bad faith behaviour on the side of the subsequent applicant or to the outcome of other proceedings such as litigation before national courts about the title to the subsequent application.
Interest of third parties to challenge entitlement to priority
Challenges to the entitlement to claim priority are usually instituted by third parties, in particular by opponents. It has been argued that in a situation where the priority applicant and the subsequent applicant are in “perfect all-time agreement” on the transfer of the priority right, it was absurd that the priority could be declared invalid and a patent be revoked as a consequence.
The rebuttable presumption concerning priority entitlement however substantially limits the possibility of third parties, including opponents, to successfully challenge priority entitlement.
Question II – The PCT joint applicants approach
The “PCT joint applicants approach” should not be confused with the “all applicants approach”.
Question II concerns a specific situation related to US law where only inventor(s) could file a patent application. This requirement has ceased to exist. However, apart from the two cases underlying this referral, there are still a significant number of cases pending where the application was filed while only inventors could apply for a US patent. However, inventors still act as applicants for the US only in cases where the PCT application is filed both for the US and for protection in Europe under the EPC.
Under Art 118, different applicants for different designated Contracting States shall be regarded as joint applicants or proprietors for the purposes of the proceedings before the EPO, and the patent shall be uniform for all designated States.
The PCT does not contain a provision like Art 118, which would impose a common procedural role throughout the grant proceedings to a plurality of applicants and prescribe the uniformity of the patent for different designated territories. A PCT application, after being accorded an international filing date, has the effect of a regular national application in each designated State.
The PCT does not exclude that different priority rights exist for different designated territories, be it for material reasons, e.g. the “same invention” criterion may be interpreted differently and is dependent on the subject-matter claimed before the respective patent office, be it for formal reasons, e.g. the applicant for one territory may not be entitled to a priority right while another applicant for another territory is entitled to claim priority stemming from the same priority application.
For the EBA, a general decision on the viability of the PCT joint applicants approach is not needed. The concept of an implied agreement should allow an assessment leading to the same result as the PCT joint applicants approach in most cases.
Even if the subsequent PCT application may be filed by a joint representative, the priority applicant should know about the details of this application and the related proceedings, including the claiming of priority that also benefits its co-applicant.
Comments
Whilst it was foreseeable that a kind of joint applicant’s approach was also valid for PCT joint applicants, in the future, it will become very difficult for opponents to put into question the validity of the priority.
The mere fact that a subsequent applicant abides by the conditions set out in Art 88(1) and in the Implementing regulations, gives a very strong presumption of the validity of the priority claimed by the subsequent applicant.
It should be remembered that, if the European application was filed by the original applicant of the priority application and the European application transferred with the priority right after the filing of the European application, there was, in general, no problem of validity of the claimed priority.
It was thus difficult to follow, that, should the subsequent applicant not be the same applicant as the original applicant, the transfer of priority should have been effective before the filing of the subsequent application.
Lots of patents have been revoked for allegedly not validly claiming the priority. Those patents would most probably not have been revoked under G 1/22 and G 2/22.
Comments
8 replies on “G 1/22 and G 2/22 – Entitlement and validity of the priority – A change of paradigm”
I’m not trying to be flippant, Daniel. On the contrary. But the thought that immediately pops up in my brain on reading your excellent assessment of the Decision is: What’s not to like?
Does anybody have any legitimate and serious criticism of the Decision? Is it all fine, or is it in any way problematic? I mean, for examople, that some people used to suggest that the “rebuttable presumption” line would allow cheats and thieves to prosper.
Perhaps though, it will only be with the passage of many years, many cases with many curious patterns of fact, that we shall be able to see anything wrong in this Decision.
Dear Max Drei,
Thanks for your comment.
I do not think that anybody should have any serious criticism of the decision.
Some patentees might just regret that it did not come earlier. I am thinking here in particular of the CRISP/CAS decision.
The solution offered is pragmatic and shows common sense.
I always had my difficulties with the approach requiring the transfer of priority before the filing of the subsequent European application. If the original US applicants would have filed the application, and the transfer of the application with priority would have occurred afterwards, there would not have been any problem, as long as all original applicants were also applicants for the EP application.
The official text of the PUC is French and mentions “celui qui” which in plural means “ceux qui”, in English “any one” respectively “all those”. The fact that one applicant was left out in the EP application jeopardises the priority right.
With the present solution, those problems can be avoided.
As much as G 2/21 (plausibility in IS) could be criticised, as being of no real help, the present decision is to be welcomed.
Thanks for that answer, Daniel. Yes, the humungous CRISPR case, indeed! Good that you mention it.
CRISPR is likely the highest value and most prominent of a large number of cases which would have been decided differently, had the Enlarged Board got its priorities right somewhat earlier.
Just as the high profile clamour of the pemetrexed case let the fox loose in the EPO hen house, so perhaps did the CRISPR furore achieve something similar on the subject of the validity of declarations of Paris Concention priority. As the saying goes “Better late than never”.
Dear Max Drei,
In T 848/18 (CRISP/CAS), the discussion was centred on the interpretation of the expression “any person” in Art 87(1). The board simply confirmed the long-established “all applicants” or the “same applicants” approach. In this respect, the decision is correct and there was no need for a referral at the time.
What triggered the referral leading to G 1/22 and G 2/22 was whether there existed a kind of “joint applicants approach” for applications entering the EPO via the PCT.
In T 848/18, not all applicants of the US provisional were cited as applicants in the European application in which the Broad Institute was also applicant for Europe. Most of the papers submitted in favour of the Broad Institute were saying that “any” should be interpreted so that from the three original applicants in the US, any one of those three, and thus only two of them, were entitled to claim the priority from the US provisional. This was in my opinion not correct as the plural of “celui qui” in Art 4A(1) PUC, the official text being French, is “ceux qui”, which in English translates in “those who” and not in “any one of those who”. Just look at the catchword points ii) and iii).
As the Broad Institute was also applicant, the priority would have been valid under G 1/22 and G 2/22, since there was a (rebuttable) presumption that the priority right was correctly acquired by the Broad Institute.
Under this premise I can agree with your say “Better late than never”. However, in T 844/18, the time was not yet ripe for a referral as it occurred later.
Decisions which would have been different under G 1/22 and G 2/22 would be for example T 1786/15, T 407/15, T 924/15 and T 1103/15.
As to CRISPR/Cas, unsurprisingly, at least one divisional application is still pending (EP3702463). Though any opposition against a patent against date could become a test of how strong the “rebuttable presumption” and the “presumed implied agreement” rules are.
The boards should have referred this years ago and this decision, while welcome, is a terrible look for the EPO. The Case Law on priority has not been coherent for many years. While there has been a general trend amongst the boards towards finding priority claims to be invalid, many disagreements have arisen between the boards. A referral would have put this to rest much earlier and the EBA’s decision means that a lot of incorrect decisions have been taken in opposition and appeals.
Dear Anonymous,
I can agree with you that the question could have been resolved earlier, but I am not sure that, for different reasons, it was a realistic perspective.
I did not check, but the number of cases in which a party request a referral is relatively low, but still much more than that of actual referrals by a board or by the president of the EPO.
Referring or not a question to the EBA is a discretionary decision of a board. If the board can find for itself convincing reasons why a question should not be referred to the EBA, it can do so.
Abiding to existing case law, claiming to do so, or not considering the question to be a fundamental question of law applicable to many other cases, are good reasons for a board to refuse a request for remittal. This also explains why the actual number of referrals are rather low. Mainly referrals come in case of diverging case law. On the other hand should parties be allowed to directly address the EBA, the latter would most probably be inundated with referrals and would have to spend a lot of time in deciding on the admissibility of such referrals.
As I explained above, In T 844/18 (CRISP/CAS), the referral was not necessary as the discussion turned mainly on in the interpretation of “any” in Art 4(1)A of the PUC. The analogy with Art 60 when it comes to assess priority was also at stake, but not with the same importance.
The first question was solved in a satisfactory manner by the board and hence it did not want a referral, cf. the catchword. The second question, which appeared much less important was also solved in a satisfactorily manner for the board. The EBA made clear in G 1/22 and G 2/22 that Art 60 was not applicable.
To sum it up, although the CRISP/CAS case an important one, the question whether the Broad Institute could claim priority in the meaning of G 1/22 and G 2/22 was not at stake.
Dear Peter,
Thanks for reminding us of the existence of a third divisional in the well-known CRISPR/Cas case.
It will indeed be interesting to see how the “rebuttable presumption” and the “presumed implied agreement” will be used by the boards in view of G 1/21 and G 1/22.
In the first divisional, EP 2 896 697, the OD decided that the priority was not valid as decided in T 844/18. A series of AR was not admitted by the OD as they did not overcome the N objection based on a document published in the priority interval. The patent was maintained in amended form, and in appeal (T2516/19) OP are scheduled from 04. to 08.03.2024. It will thus be a test how G 1/22 and G 2/22 will be applied. Any amendment reverting to the AR not admitted by the OD could thus be not admitted into appeal under Art 13(2) RPBA21. It will be interesting to see whether the board will consider G 1/21 and G 1/22 as exceptional circumstances under Art 13(2) RPBA21.
The second divisional, EP 2 940 140, was opposed and the patent was revoked under Art 76(1). No appeal was filed.
For the third divisional, EP 3 702 463, the applicant has just replied to the ESR. The ESO was rather positive, but the applicant amended the claims and the description. We are thus still far from an opposition.