13/11/2023
On 10 October 2023 the Enlarged Board of Appeal (EBA) issued its decision on consolidated cases G1/22 and G2/22. The two cases raised several interesting points regarding entitlement to claim priority.
In summary, the EBA concluded that:
- the European Patent Office (EPO) is competent to assess entitlement to claim priority; and
- that there is a ‘rebuttable presumption’ that an applicant claiming priority in accordance with the formal requirements under the EPC is entitled to do so.
Background:
As reported in our blog the referral in consolidated cases T 1513/17 and T 2719/19 concerned the following questions:
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 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?
In the two cases underpinning the referral, both the Opposition Division and the Examining Division found the priority claim to be invalid because not all of the inventors who were named as applicants in the US priority patent application had assigned the priority right to the applicants of the respective European patent applications before the filing of the PCT application.
As a reminder, under Article 87(1) EPC “[a]ny person who has duly filed […] an application for a patent […] or his successor in title, 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”.
Decision
Question 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?
Firstly, the EBA have decided that the EPO is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
Secondly, the EBA have decided that the applicant claiming priority benefits from a ‘rebuttable presumption’ under the EPC that they are entitled to claim such priority. This means that the entitlement to priority is considered valid unless shown otherwise.
Regarding the first point, the EBA have provided an indication on what would be deemed a valid transfer of the priority right under the EPC. In particular, the decision states at paragraph 100 that the autonomous law of the EPC should not require that the assignment of priority rights has to be in writing and/or signed by the parties. This is because the EBA have concluded, as seen at paragraph 99, that 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”. Therefore, although the transfer of priority rights is now being assessed by the EPO, the EPO cannot impose standards higher than those imposed by national laws. The decision even goes so far as to further specify at paragraph 100 that “if there was a jurisdiction that allow an ex post (“nunc pro tunc”) transfer of priority rights, the EPO should not apply higher standards”. This effectively opens the door to retroactive transfers of priority rights; in other words, this provides the patentee or applicant an opportunity to fix the priority claim, at least in the eyes of the EPO, after filing the subsequent application. However, given that various national courts may well apply stricter standards, it is still best practice to obtain or transfer the right of priority before filing a patent application claiming such priority.
Importantly, the EPO’s competence to assess priority entitlement does not imply that national courts are bound by the EPO’s assessments.
Another particular point of interest in the decision is that the EBA have decided that, even where the applicant(s) for the priority application and the European patent application are different, there is a “rebuttable presumption” that a priority claim is valid. This means that the EPO will assume that entitlement to priority is valid, provided the declaration of priority is made as required under Article 88(1) EPC. This is a significant departure from recent case law, where the burden of proof was with the patent proprietor to show that the priority claim was valid when challenged. It appears that the main driving force behind this decision to lower the standards for a valid transfer of priority rights is to facilitate international patent protection, by reducing the risk that inventors’ interest in obtaining patent protection in multiple jurisdictions is jeopardised by formal requirements they may inadvertently fail to meet.
In practice, this ‘rebuttable presumption’ standard will reverse the burden of proof, i.e., “the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing” (paragraph 110 of the decision)rather than the patentee or applicant. Therefore, this decision will be welcomed and favoured by patentees and applicants because the risk of the EPO finding an invalid priority claim is likely to be reduced. Further, some patentees and applicants may have been worried that this referral could have resulted in them having to prove the validity of the priority claim upon filing / declaring priority.
On the other hand, this decision is not good news for parties who wish to challenge the priority claim / the right to claim priority, as they now carry the burden of proof and must ‘demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to priority’, see paragraph 110 of the decision. This prevents parties from simply raising speculative doubts with regards to the priority claim without any facts to support them. In practice, finding the facts to support this claim may be difficult, if not impossible, because the evidence required to support such a claim is not often readily available to the party challenging the priority right, such as assignment documents.
Question II:
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 EBA have decided that the mutual filing by A and B demonstrates, absent indications to the contrary, the existence of an ‘implicit agreement’ between A and B. This implicit agreement conferring party B the right to rely on the priority claim.
The EBA have made it clear, in paragraph 125, that this ‘implicit agreement’ approach applies regardless of whether the subsequently filed application is a PCT application. For example, the approach applies if the subsequently filed application is a European application. The implied agreement is to be assessed under the autonomous law of the EPC, which is consistent with the approach chosen for the rebuttable presumption for the priority entitlement.
In order to challenge or question this ‘implied agreement’, evidence and factual indications of a substantial nature have to be presented by the party questioning the implied agreement to support the position that an agreement on the use of the priority right has not been reached or is fundamentally flawed.
The EBA further reiterates that the ‘rebuttable presumption’ that the entitlement to priority exists, discussed with regards to question I, fully applies to the situation addressed in question II also.
Our Thoughts
This decision will come as good news for patentees and applicants, because as discussed above, the burden of proof has been reversed to the party challenging the entitlement to priority. It also means that matters of contract, and employment, law which are almost always the basis for transfers of this kind, can be handled by national courts under national law who are well-practised in handling such matters.
We would suggest that parties who are currently in proceedings, where lack of entitlement to priority is a key issue, review their case in view of this decision. In particular, patentees and applicants, who may now be able to simply cite these cases and state that the transfer of priority was valid, forcing the party challenging lack of entitlement to priority to provide evidence to the contrary.
It will be interesting to see how the case law develops around this point, particularly on what will be considered sufficient “evidence to the contrary”. Our initial view is that this may well mean only challenging parties who are related in some way to the patent or application will be able to satisfy this requirement.
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.
