If during the priority year a European patent application - filed by applicant A - is transferred to a party B, is then the priority claim from a subsequent application (from which the patent in suit matured) by applicant A to the earlier application valid? Which acts and statements, including their timing, constitute the transfer of a priority right between parties? And what role do the parties' intentions - as far as they can be derived from the documents on file - play in this?
In the present opposition appeal case, the Opposition Decision had decided that the claimed subject matter (partially) enjoyed priority from published application EP 1834951A [D1], and that D1 was thus not novelty-destroying for the patent in suit. The patent was maintained on the basis of the then pending main request.
In its Grounds of Appeal, the opponent-appellant argued, relying on the declaration of assignment between A and B (both based in The Netherlands) of the priority application signed two weeks before filing of the subsequent application, that the right to claim priority from D1 belonged to B as successor in title, rather than to A. Emphasis was placed on the specific wording "declares to have assigned all rights pertaining to the European patent application" in the declaration of assignment, suggesting that this includes the right to claim priority from the specified European patent application.
The patentee essentially counter-argued that (i) since the actual recordal at the EPO of the assignment took only place long after the filing of the subsequent application, the transfer was only then effective, and (ii) in accordance with the "Haviltex" decision of the Dutch supreme court, the intention of parties - to merely transfer the right to the patent application, not the right to priority - should prevail. He further requested referral to the Enlarged Board of Appeal of questions regarding whether a priority right can retain both with the original applicant and be transferred to the assignee ("inclusive or") and requested correction under Rule 139 EPC of the applicant's name.
The Board (enlarged by a technically qualified and a legally qualified member) found that the declaration of assignment between A and B was clearly drawn up to bring about an assignment of rights as well as to serve the purpose to provide proof of what had been agreed between the contracting parties, A and B, i.e. of the legal basis for the assignment. Thus, the requirements of a formal delivery grounded on a valid legal basis had been met, and the document was sufficient to execute the assignment under the law of the Netherlands of the priority right, which is one of the rights pertaining to the patent application. The Board saw no basis to assume that under the law of the Netherlands the wording "all rights" would not be sufficient for this purpose and that the assignment would require explicitly mentioning the right to priority. Furthermore, although the Board accepted that under the law of the Netherlands, in particular according to the "Haviltex" principle, the intentions of the parties are relevant or even decisive for the interpretation of an agreement, in the present case the patentee did not prove such contradictory intentions, notably by using the explicit "all rights" wording rather than mentioning the priority right in any way.
The Board saw no reason to refer questions to the Enlarged Board nor to allow a correction under Rule 139 of the applicant's name. Consequently, the priority claim of the patent in suit to D1 was considered invalid, and all admissible requests were considered to lack novelty over D1.
In the present opposition appeal case, the Opposition Decision had decided that the claimed subject matter (partially) enjoyed priority from published application EP 1834951A [D1], and that D1 was thus not novelty-destroying for the patent in suit. The patent was maintained on the basis of the then pending main request.
In its Grounds of Appeal, the opponent-appellant argued, relying on the declaration of assignment between A and B (both based in The Netherlands) of the priority application signed two weeks before filing of the subsequent application, that the right to claim priority from D1 belonged to B as successor in title, rather than to A. Emphasis was placed on the specific wording "declares to have assigned all rights pertaining to the European patent application" in the declaration of assignment, suggesting that this includes the right to claim priority from the specified European patent application.
The patentee essentially counter-argued that (i) since the actual recordal at the EPO of the assignment took only place long after the filing of the subsequent application, the transfer was only then effective, and (ii) in accordance with the "Haviltex" decision of the Dutch supreme court, the intention of parties - to merely transfer the right to the patent application, not the right to priority - should prevail. He further requested referral to the Enlarged Board of Appeal of questions regarding whether a priority right can retain both with the original applicant and be transferred to the assignee ("inclusive or") and requested correction under Rule 139 EPC of the applicant's name.
The Board (enlarged by a technically qualified and a legally qualified member) found that the declaration of assignment between A and B was clearly drawn up to bring about an assignment of rights as well as to serve the purpose to provide proof of what had been agreed between the contracting parties, A and B, i.e. of the legal basis for the assignment. Thus, the requirements of a formal delivery grounded on a valid legal basis had been met, and the document was sufficient to execute the assignment under the law of the Netherlands of the priority right, which is one of the rights pertaining to the patent application. The Board saw no basis to assume that under the law of the Netherlands the wording "all rights" would not be sufficient for this purpose and that the assignment would require explicitly mentioning the right to priority. Furthermore, although the Board accepted that under the law of the Netherlands, in particular according to the "Haviltex" principle, the intentions of the parties are relevant or even decisive for the interpretation of an agreement, in the present case the patentee did not prove such contradictory intentions, notably by using the explicit "all rights" wording rather than mentioning the priority right in any way.
The Board saw no reason to refer questions to the Enlarged Board nor to allow a correction under Rule 139 of the applicant's name. Consequently, the priority claim of the patent in suit to D1 was considered invalid, and all admissible requests were considered to lack novelty over D1.
