CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 521/18 – Application of G 1/22 and G 2/22 to a piece of prior art under Art 54(3)

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The patent is the result of a divisional application of EP04752581/1 641 809. The patent relates to a “Method and Compositions for Detection and Enumeration of Genetic Variations”.

Brief outline of the case

The patent was revoked and the proprietor appealed.

The MR=AR3 was lacking N over D4=WO 2004/069849 with D4a=P4=US 60/476,504=priority application of D4, prior art under Art 54(3).

The other AR were either not allowable or not admissible and the board thus confirmed the revocation of the patent.

The case is interesting in view of the application of G 1/22 and G 2/22 with respect to D4, a piece of prior art under Art 54(3).

The OD’s decision

The OD held that D4 was entitled to priority from application P4=D4a. and that the subject-matter of claims 1 and 5 of AR 3, having become the MR lacked N over D4.

The proprietor’s point of view

The proprietor disputed the validity of the transfer of the priority rights to the applcant of D4.

The board’s decision

As regards the question of priority entitlement of D4, G 1/22 and G 2/22 have set out that normally a strong presumption exists on the validity of the priority. This strong presumption also applies 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.  

This strong presumption applies in the present case, which corresponds to the situation referred to in Order II. of G 1/22 and G 2/22.

Such a presumption can only be rebutted in the presence of “serious” doubts based on facts or clear indications to the contrary, see G 1/22 and G 2/22, Reasons 110 and 125. The proprietor filed documents D12 to D14 to cast doubts that a valid priority transfer took place from the inventors to the applicant of D4.

For the board, documents D12 to D14 do not cast any such doubts on the presumption of an assignment. These documents are LinkedIn profiles of three further inventors of application P4=D4a that show that they are employed by Roche, i.e. the company that bought the applicant of D4 in 2007.

Documents D12 to D14 are irrelevant to the question whether there was an agreement between the parties named as applicant in P4=D4a and those named as applicant in document D4, allowing the latter to rely on the priority right established by the filing of P4=D4a.

In particular documents D12 to D14 contain no evidence concerning a transfer of rights, be it in favour or against it. Nor do these documents provide evidence that Roche as their employer has access to employment contracts previously signed with a different company, i.e. the original applicant. The same considerations are valid for the further publications indicating that some of the present inventors were employed by Roche at a much later point in time, namely in 2017, see documents D15 to D17.

The evidence based on documents D12 to D14 and D15 to D17 therefore raises speculative doubts on unspecific facts only.

This evidence is not suitable to rebut the strong presumption on entitlement as also confirmed by the declarations of two inventors of document D4, Mr Leamon, see D10, point 5, and Mr Sarkis, see D11, point 5.

Consequently, D4 is entitled to priority from application P4=D4a, and thus forms prior art according to Art 54(3).


G 1/22 and G 2/22 dealt with the validity of the transfer of the priority right for a subsequent European application.

It does not however come as a surprise that it is as well applicable to the priority claim for a piece of prior art under Art 54(3).

The efforts of the proprietor to claim that the priority of D4 was not valid were thus in vain.

It is to my knowledge, the first application of G 1/22 and G 2/22 to a piece of prior art under Art 54(3).

On the procedure

The patent bears the following classification units: C12N 15/10, C12Q 1/68, C07H 21/04. According to the ESR, the search was carried out in C12N and C07H.

D4 bears the following classification units: B01L3/00; C07H21/00; C12N15/10; C12P19/34; G01N21/25; G01N21/64; (IPC1-7): C07H.

It is thus surprising that the top-up search did not reveal D4. As D4 was N destroying under Art 54(3) for AR3 in opposition, this should logically have been the case for claim 1 as granted.

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