27/03/2023
On 1 February 2022, the EPO Board of Appeal referred, by interlocutory decisions T 1513/17 and T2719/19, two questions to the Enlarged Board of Appeal under G1/22 and G2/22. The two questions were as follows:-
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?
II. If question I is answered in 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 Enlarged Board of Appeal has now issued its preliminary opinion for the referrals G1/22 and G2/22, prior to the oral proceedings scheduled to be held on 26 May 2023.
We have summarised the preliminary opinion below.
Interpretation and scope of the questions
The first aspect of the preliminary opinion is directed towards clarification of some of the questions.
Regarding question 1, the Enlarged Board has interpreted this broadly such that it encompasses all situations where the applicant claiming priority is not clearly identical with the applicant of the priority application.
Further, with regard to the term “jurisdiction”, the Enlarged Board understands that question 1 refers to the EPO’s competence to assess the entitlement to claim priority of the party filing the subsequent application. The Enlarged Board has clarified that the term “jurisdiction” should not be misunderstood in a way that, in the event question 1 was answered in the negative, the EPO would not be in a position to proceed in a pending case after entitlement to priority becomes an issue.
Admissibility of the referral
The communication confirms that the Enlarged Board of Appeal consider the referral to be admissible.
Therefore, unless any of the parties to proceedings wish to address the admissibility of the referral at oral proceedings, this matter will not be addressed again by the Enlarged Board.
Discussion of Question 1
The Enlarged Board understand that the opinions concerning this question are deeply split. In particular, considering the amicus curiae briefs which appears to evenly split between “yes” and “no”.
Upon review of the preliminary opinion, it is clear that the Enlarged Board have also not reached a definitive conclusion at this stage nor have they provided an indication on which way they are swaying.
The Enlarged Board appear to be of the opinion that question 1 requires consideration of more fundamental points underlying Article 87 EPC, including its relation to Article 60(3) EPC according to which provision the applicant, in proceedings before the EPO, shall be deemed to be entitled to exercise the right to a European patent.
The communication indicates the following points the Enlarged Board think may be useful to discuss at oral proceedings:-
- Has the case law always been (implicitly or explicitly) supporting the EPO’s competence to assess entitlement to priority? (It has been noted in an amicus curiae brief that objections based on the entitlement to priority became routine in opposition proceedings only from about 2010.)
- Does Article 60(3) EPC have no impact on the interpretation of Article 87 (implying answering question I with ‘yes’) or should the latter be understood in light of the former (implying answering question I with ‘no’)?
- Should entitlement to priority be assessed ex officio in examination proceedings?
- Could an assessment of entitlement to priority be made on the basis of the autonomous law of the EPC (i.e., without invoking national law)?
- If the EPO has the competence to assess entitlement to priority rights, is it also competent to assess the entitlement to the priority application of the respective applicant? (From T 844/18 it can be understood that the entitlement of the party filing the priority application to do so and to acquire a priority right should not be assessed.)
Therefore, although we do not have a preliminary indication of which way the decision is going to go with regards to question 1, we do have an indication and framework of the discussions to be had during the oral proceedings.
Discussion of Question 2
The Enlarged Board provide a more conclusive preliminary opinion with regards to question 2 compared to that of question 1 discussed above.
The Enlarged Board indicates that it is leaning towards the positive answer for question 2 (assuming that the EPO is competent to assess entitlement to priority).
Further, the Enlarged Board indicates that it shares the reservations concerning the “PCT joint applicant approach” which were expressed in the referring decision. However, they do appear to have the preliminary opinion that all applicants of a PCT application may enjoy a priority right acquired by only one of the applicants if a formal or informal agreement exists or if it is assumed to exist between the applicants on the sharing or transfer of the priority right.
Therefore, the Enlarged Board tends to support a positive answer to question 2 on the basis of such concept of an implied agreement. Nevertheless, we expect to see a more detailed discussion and review into the “PCT joint applicants approach” at the oral proceedings.
Our Thoughts
The preliminary opinion issued by the Enlarged Board of Appeal gives us an interesting insight into the Enlarged Boards thinking.
It appears likely that question 1 is going to be the main talking point of the Oral Proceedings, with the Enlarged Board refraining from concluding a preliminary opinion and instead providing clear points for further discussion.
In light of these points for discussion and the preliminary opinion generally, it will be interesting to see whether either party decides to take the opportunity to file further submissions before 5 May 2023.
As highlighted in the communication, the Enlarged Board is not bound in any way by their preliminary opinion. Therefore, we will have to wait to see how closely the preliminary opinion is followed.
We anticipate that irrespective of the answer there will be significant consequences. For example, if the answer is negative, and the EPO decide not to consider the validity of claims to priority from a successor in title at any point, patents otherwise invalid, for example due to intervening prior art, may be maintained. On the other hand if the answer is positive, further decisions will be required as to what constitutes a valid priority claim from a successor in title, and more importantly under what law. We also anticipate a positive answer will result in an additional burden on the proprietor to prove that they have a valid claim to priority, and that burden may be shifted to be earlier in the procedure, perhaps even on filing.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
