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The Enlarged Board of Appeal of the EPO recently delivered its long-awaited decision in the consolidated cases G 1/22 and G 2/22, bringing much-needed clarity to the contentious issue of priority entitlement. This decision not only reaffirms the EPO’s authority to assess entitlement to priority but also upholds the validity of the “PCT Joint Applicants Approach“.
The genesis of this pivotal decision can be traced back to proceedings in T 1513/17 and T 2719/19, where the Board of Appeal referred two pertinent questions to the Enlarged Board of Appeal. First, it addressed whether the EPO possesses the competence to evaluate an applicant’s entitlement to claim priority. Second, it delved into a situation where inventors filed a US patent application, which subsequently served as a priority application for a later PCT application. However, the inventors were only named as applicants for the US patent, while different legal persons were named for European patent protection. This case raised questions about the validity of the co-applicant’s reliance on the priority right under Article 87(1) EPC.
The Enlarged Board of Appeal’s response to the first referral question was significant. It not only confirmed the EPO’s competence to assess an applicant’s entitlement to claim priority under Article 87(1) of the EPC but has also introduced a “rebuttable presumption” that significantly alters the landscape of priority entitlement in patent proceedings.
The Enlarged Board of Appeal established that the priority right and its transfer should be evaluated under the EPO’s autonomous law. Consequently, the EPO will now adopt the “lowest standards” set by national laws and will accept informal or tacit transfers of priority rights in nearly all circumstances. The Enlarged Board of Appeal also suggests that the transfer of priority rights need not occur before the filing of the later application. It contends that even if certain jurisdictions allow for an ex post transfer of priority rights, the EPO should not impose stricter standards.
In essence, the new rule establishes a presumption of the applicant’s entitlement to priority if they meet the formal requirements (Article 88(1) EPC) for claiming it. The Enlarged Board of Appeal asserts that this “presumption is rebuttable and applies in any case where the priority applicant is not identical to the subsequent applicant, and regardless of whether the subsequent application is a PCT application”.
This introduction of “rebuttable presumption” is expected to shift the burden of proof in priority entitlement cases, which previously lay with the applicant or patentee, where they were required to provide evidence demonstrating the validity of their claim to priority. The burden of proof will now be the opponent’s or the EPO’s responsibility and they would need to present “specific facts that support serious doubts” regarding the validity of the priority entitlement in pre-grant proceedings.
The Enlarged Board of Appeal faced a second critical question, specific to the US law: where a PCT-application designates party A as applicant for the US only and party B as applicant for other designated states, can party B validly rely on the priority right claimed in a PCT application, even if the earlier patent application had only designated party A as the applicant?
The Enlarged Board of Appeal has established that “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”. Therefore, in the eyes of the EPO, the joint filing of a PCT application by applicants for the US and further applicants for other designated states will be presumed an implied agreement that the priority claim should be valid for the PCT application and this presumption is also rebuttable if compelling evidence to the contrary is presented.
The decision provides clarity on the transfer of priority rights, an applicant’s right to claim priority and the burden of proof for challenging priority. It has the potential to change EPO opposition practice and block many speculative challenges to priority entitlement.
If you would like to discuss the ramifications for priority rights that you are opposing or defending, please contact our Patent Attorney Team.
