EP2771468 - Decision of OD in Crispr case (first instance)
You can't slice up a priority right |
Today we have the first instance decision in the opposition against European patent 2771468 having the title "ENGINEERING OF SYSTEMS, METHODS AND OPTIMIZED GUIDE COMPOSITIONS FOR SEQUENCE MANIPULATION" (PCT/US13/74819). The grounds for the decision were published 26 March 2018.
We usually only have board of appeal decisions, but I'm told this is an important case as it relates to the CRISPR technique of DNA manipulation. It is moreover interesting because of its scale and the issues it raises. There were 9 opponents, 255 documents filed, 72 auxiliary request and a 40-page decision.
The priority documents are US provisionals and each have a number of natural persons as inventors/applicants. I count a total of 12 different natural persons who are applicants to the priority documents in various combinations. It turns out that for some of these persons the priority rights had not been transferred to an applicant of the PCT application, or at least evidence of a transfer acceptable to the OD was not filed. As a result, the priority claim was objected to the by the opponents. The proprietors have numerous arguments why this objection should not be allowed, but in the end the priority claim is not accepted. Because of the invalid priority, the patent was found not novel.
The underlying problem appears to be hidden in reasons 75-75.1: one of the inventor/applicants of the provisional was not an inventor in the sense of the US law. Accordingly, his successor in title was left of the PCT application, probably to satisfy US law. That one of the persons, who is not an inventor, misses as an applicant on the PCT application now appears to doom this patent in Europe.
Notice of appeal has already been filed, so we'll be interested to see how this case progresses.
11.1
Admissibility
of Oppositions:
34
All
of the oppositions filed within the opposition period meet the requirements of
Articles 99(1) & 100 EPC and of Rules 3(1) and 76 EPC. This has not been
contested by the PP. As regards O4’s submission of 23.12.2016 (see paragraph below).
11.2
Procedural
Decisions:
11.2.1
Admittance
of documents filed before the oral proceedings:
35
Before
the oral proceedings, the PP had argued that
O4’s submission of
23.12.2016 should not be admitted into the
proceedings since it amounted to a new opposition being filed more than nine
months after the mention of the grant of the opposed patent. This should not be
allowed just because the representative of 04 had changed. 04 argued in writing
that its submission should be seen as a reply to the PP's extensive submission
filed on
30.06.2016 and that the PP's reply of 16.11.2017
contained an abusive number of auxiliary requests, documents and declarations.
36
During
the oral proceedings, the opponents objected to the documents D120- D121
because they were contradicting the PP's line of argument and therefore could
not be relevant. Moreover, all documents and auxiliary requests filed with the
PP's reply of 16.11.2017 should be considered late filed because they were
filed on the last date before the expiry of the Rule
116 EPC time limit.
37
In
the letter of 16.11.2017,the PP argued that the documents D147-D150,
D154-D158,D160-D161 and D166 should not be admitted
into the proceedings. During oral proceedings, the PP argued in favour of
admitting all documents into the proceedings in view of the importance of the
outcome of the proceedings. In particular, D120-D121 were filed in support of
one of the PP's lines of argumentation and therefore should be admitted even if
contradicting one of the PP's present lines of argumentation.
38
The PP requested in writing that O4's submission of 23.12.2016 should not be admitted into
the proceedings because it represented the filing of a fresh opposition.
However, the OD finds that all opposition grounds and arguments were already
submitted within the opposition period on 10.11.2015 and therefore
admits O4's submission of 23.12.2016 into the
proceedings.
39
The
OD finds that prima facie all documents concerning entitlement to priority and
filed before the oral proceedings, have been filed in reply to previous
observations of the parties and therefore are all relevant. Moreover, the
documents filed after the Rule 116 EPC time limit were filed long enough in
advance of the oral proceedings that none of the parties could convincingly
argue and did not argue that they did not have time to prepare for the
discussion of the documents during the oral proceedings. With respect to the
opponents' objections to the documents filed on 16.11.2017,the OD finds that these documents were
filed within the Rule 116 EPC time limit and since they are relevant, because
they represent support to the PP's reply to the opponents' observations, cannot
be considered late-filed. Finally, the OD agrees with the PP that D120 and D121
were filed with the PP's first reply and supported the PP's line of
argumentation in that reply. None of the opponents objected to the admittance
of D120-D121 at that stage and they therefore entered into the proceedings at
that stage already (see annex to the summons to oral proceedings). As argued by
the PP, a legal provision for a later non-admittance of previously admitted
documents does not appear to exist in the EPO. Thus, the OD decides to admit
all documents concerning entitlement to priority and filed before the oral
proceedings into the proceedings.
39.1
Admissibility
of documents relevant for substantive issues were not decided upon during the
oral proceedings.
11.2.2
Admittance
of a document distributed during oral proceedings:
40
A
document was distributed on the beginning of the second day of the oral
proceedings. The PP explained that it was relevant because it showed that the
Rockefeller University and Broad Institute had come to an agreement that
Rockefeller had no rights to the opposed patent. The opponents objected that
the document - being a Press Declaration from the PP - be admitted as it had
been known to the PP days before the oral proceedings and could have been filed
earlier. According to the opponents, the filing at this stage represented an
abuse of procedure.
40.1
The OD finds that the PP had
already explained in writing and during oral proceedings their view that the
fact that Mr.Marraffini or a successor in title was not listed as applicants of
the opposed patent did not represent a mistake and the document therefore did
not add any information to the PP's line of argument and was not relevant for
the proceedings. Therefore, the OD decided
that the document was not admitted into the proceedings.
II.2.3
Should
the Technical Expert announced by the PP be allowed to speak:
41
By
letter of 13.11.2017, the PP had announced Steven Trybus as a Technical
Expert
to be heard during the oral proceedings and indicated that he was an expert in
US law. The opponents argued that he should not be allowed to speak because his
expertise was not relevant for the proceedings which concerned European law and
because the issue on which he was characterised as an expert was too broadly
defined.
42
During
the oral proceedings, the OD announced that it would decide on
whether Steven Trybus be allowed to speak
once it was requested and it was clear on which subject the PP wished him to
comment. The PP did not at any particular stage of the oral proceedings
indicate an intention to hear Steven Trybus and the OD therefore did not need to
decide on this question.
11.2.4
Separate
Appealable Decision on Legal Entitlement to Priority:
43
The
PP argued during oral proceedings and in writing that a separate appealable
decision should be issued by the OD with respect to legal entitlement to
priority because the further proceedings depended entirely on the
interpretation of the law on legal entitlement to priority (cf Guidelines E-X
3.). The opponents (Os), in particular 04 in its letter of 29.12.2017,argued against a separate appealable
decision on legal entitlement to priority since this would delay even further a
decision on the merits of the case and by consequence decisions in the
co-pending patents and would extend the legal uncertainty for the public. In
addition, there were other objections raised against the opposed patent so that
continuation of the proceedings did not depend entirely on said point-of-law.
44
The
OD finds that a separate appealable decision under Article 106(2) EPC should be
the exception in order to avoid fragmentation of the proceedings and should be
given only if the duration or costs of the proceedings are reduced (cf
Guidelines E-X 3.). Even if the PP finds that a decision on this point-in-law
represents a simplification and thereby a reduction of the costs of presenting
the case before the Boards of Appeal, the interests of the opponents and public
in having a conclusion of the opposition proceedings, as a whole, also needs to
be considered.
45
In
view of the multitude of objections raised against the opposed patent, the OD
is not convinced that the continuation and outcome of the opposition
proceedings depend entirely on the point-of-law relating to legal entitlement
of priority. Moreover, it finds that there are no conflicting decisions from
different Boards of Appeal on this point-of-law and that Guidelines A-lll 6.1
provide instructions on how to deal with the issue. Thus, allowing a separate
appealable decision would likely not shorten the proceedings or be, otherwise,
procedurally efficient. The OD therefore decided against allowing a separate
appealable decision on this issue.
11.2.5
Admittance
of auxiliary requests AR1-AR62 into the proceedings:
46
The
PP filed AR1-AR72 before the Rule 116 time limit in preparation for the oral
proceedings. In the letter accompanying the auxiliary requests it was explained
that some of the ARs were filed in order to overcome objections under Article
123(2) or problems related to same invention under Article 87 EPC and some were
filed in order to overcome novelty and inventive step objections.
47
Upon
the OD's conclusion
that the opposed patent as granted lacked novelty
over D3 and D4, the PP was given time to
decide with which auxiliary request to proceed. In response, the PP filed
AR1-AR64 which represented a selection from the 72 auxiliary requests filed on
16.11.2017. The PP stated that none of these requests was filed with the
purpose of addressing the novelty issue with respect to D3 and D4. The P added
that they would not provide any comments on why these requests were novel over
D3 and D4, but merely stated that they were filed with a view to appeal
proceedings.
48
The
Os argued that
AR1-AR64 should not be admitted into the proceedings
because
they did not represent an attempt to overcome the novelty problem and that the
auxiliary requests contained many additional clarity and Article 123(2)
problems which would have to be discussed if they were admitted into the
proceedings. The vast amount of 64 auxiliary requests imposed an undue burden
on all parties and therefore represented an abuse of the proceedings.
49
When
deciding on the
admissibility of auxiliary requests in opposition
proceedings, it is a requirement that the amendments are occasioned by a
ground of opposition (cf Rule 80 EPC).
That is to say, amendments are admissible only if they are required in order to
meet a ground of opposition.
As a general principle, auxiliary requests
must be filed in a reasonable number, must overcome the objections raised and
not introduce new ones. In the present case, the PP indicated that the
auxiliary requests overcame issues relating to Article 123(2) EPC and novelty
and inventive step.
However, without indicating specifically
how the individual requests overcame which novelty and inventive step
objection.
50
The
conclusion, which occasioned the examination of auxiliary requests, was the
lack of novelty of the patent as granted over D3 and D4. As clearly stated by
the PP during the oral proceedings, they were not going to provide any comments
on why any of AR1-AR64 should be considered novel over D3 and D4 and indeed
none of the 64 auxiliary requests was filed in order to overcome a novelty
objection based on D3 and D4. As an example, AR1 was filed to overcome an
Article 123(2) objection raised against dependent claims. In line with
Guidelines H-ll 3.2, the OD finds that "in the absence of any amendments
submitted by the patent proprietor with a view to meeting the grounds of
opposition" at issue, there is no possibility to make any other amendments
addressing said grounds. The OD further finds that this is supported by
T382/96, which, as cited in the Case Law book (III.I.3.1, 8th ed., p.717 of the
English version), states that defining the subject-matter of a patent rests
with the patent proprietor and that this responsibility cannot be offloaded by
filing a multitude of requests. Doing so represents an abuse of procedure since
it overburdens the EPO with work not originally theirs (see also T446/00
reasons 2.3, 4.3 and 4.5.4). In particular, in a situation where, as in the
present case, the 64 requests represent a pick and mix of features present in
the opposed patent (cf T745/03).
51
During
the oral proceedings, the PP suggested that the auxiliary requests all be
admitted into the oral proceedings and subsequently all be found not to be
novel over D3 and D4 since the PP would not provide any comments why the
auxiliary requests were novel in view of D3 and D4. However, this procedure
would clearly not be acceptable since it is a requirement that the OD's
decision contains the reasons for not allowing each of the auxiliary requests
(cf Guidelines H-lll 3.1.3). Moreover, the opponents have a right to comment on
each of the auxiliary requests admitted into the proceedings. Thus, the
admittance of 64 auxiliary requests would also pose an undue burden on the
opponents.
52
The
auxiliary requests AR1-AR64 which do not intend to overcome the novelty objection
based on D3 and D4, therefore are not filed with the purpose of obtaining a
legally valid patent. Considering this fact, the OD finds that procedural
economy does not need to be balanced with the PP's interest in obtaining a
legally valid patent and therefore decides that procedural economy must cause
the OD not to admit the auxiliary requests into the proceedings.
11.3
Conclusions
on Grounds of Opposition:
11.3.1Novelty:
11.3.1.1 Legal Entitlement to Priority:
53
In
preparation of oral proceedings, the PP partially modified his argumentation
and with submission of 16.11.2017 presented 3 lines of argument, which were
then discussed at the oral proceedings:
I.
The
EPO should have no power to assess legal entitlement to the right of priority.
II.
In
case of joint/multiple applicants in a first application, the meaning of the
term "any person" under Article 87 EPC should be interpreted to mean "one or some indiscriminately" of the
co-applicants.
III.
The
meaning of “any person who has duly filed" should be interpreted according
to national law, in this case US law.
54
These
perspectives were not fully addressed by the OD's preliminary opinion, as they
were submitted at a later stage. The OD's preliminary opinion followed the EPO
established practice and case law of the boards of appeal (BOA) in the sense
that the right of priority is vested on either the applicant or his successor
in title. In case of lack of applicants identity if the validity of the
priority is questioned, evidence is required that a valid transfer of the
application from which priority is claimed (or of the priority right as such)
has taken place before the filing date of the later patent application. If the
earlier application is filed by joint applicants, either all of them or their
successor(s) in title should be amongst the joint applicants for the later
application.
55
In
the specific case, the PP asked the OD to "reconsider" this established practice and
case law and to deviate from it.
11.3.1.1.1 What is not disputed bv the parties
56
It is
firstly observed that the discussion of priority and the 3 approaches suggested
by the PP rely on the following common legal basis, which has not been disputed
by any of the parties to the present proceedings.
57
First
the EPC constitutes a special agreement within the meaning of Article 19
Paris
Convention (cf. Preamble to the EPC), therefore application of its provisions
cannot contradict the basic principles concerning priority laid down in the
Paris Convention (PC) (cf. G 3/93,point 4 of the reasons and T 301/87OJ EPO 1990,335,Reasons point 7.5; J 15/80,head note III; see also Erster Vorentwurf, in Grur Int. 1970,102,point 7). This is valid even if the EPO is
not formally bound by the PC. Second, the scope and purpose of the PC is to
provide a mechanism as simple as possible and appropriate for applicants to
obtain international protection for their invention, as well as for patent
offices to assess the validity of priority claims. It was also not disputed
that the question of entitlement to a patent is distinct from the question of
entitlement to priority. Finally, both the PP and the Os recognised the
existence of the
established practice at the EPO as
mentioned under point 54.
11.3.1.1.2 The PP's first line of arguments - EPO
power to assess legal entitlement
to the right of priority
58
In
its first line of argument, filed in preparation of the oral proceedings, the PP
submitted that the EPO should not examine the proprietor’s
entitlement to the right of priority, which should rather be left to the
jurisdictions of the national courts. In application of the principle of the
division of powers between the
EPO and the contracting states, the EPO should accept entitlement
to priority
as validly claimed, subject to the
objective assessment on the "same invention" requirement. To support
his arguments, the PP relied on the preliminary communication of the BOA in T
239/16 (D207, EP05012711.7),
on the Travaux
Preparatoires to the EPC 1973 (BR/51/70, Minutes of the second meeting of
working party I sub-committee on "implementing regulations" of 15 to
18 September) and on the legal opinions of Prof. Straus (D 199) and Prof.
Torremans (D197).
59
The
following reasons were submitted by the PP:
59.1
First,
the assessment of the rightful owner of the priority right implies a
determination of ownership of a property right, which has never been intended
to be the EPO's jurisdiction. This is supported by reference to the Travaux
Preparatoires to the EPC 1973 BR/51/70, in which the Sub- Committee expressed
the view that it was not desirable "to allow the
EPO to require of an applicant proof of his entitlement to avail himself of
priority in cases in which the applicant and the proprietor of the first application
were two separate persons....". On account of further
indications, such as the requirements for the priority declaration and the fact
that the priority application is not yet published when the later European
application is filed, the PP concluded that the system ensures that in
principle only the applicant of the first application - or some individual
connected to him - has knowledge of the priority application. Thus the system
intended the EPO to presume entitlement of the
applicant claiming priority, whereas possible fraudulent activities would more
appropriately be dealt with under entitlement actions before a national court.
59.2
Second,
such assessment would require the EPO to apply the national law of all of the
(177) countries of the Union, with a consequent enormous burden for a patent
office.
59.3
Third,
a challenge to the entitlement of a priority right, as for an entitlement
objection to a property right under most legal systems, should be allowed only
against a person alleging himself to be the real owner, rather than against any
third party (so-called question of legal standing).
59.4
Fourth,
in respect of the entitlement to the right of priority within the meaning of
Article 87(1) EPC, the EPO should adopt the same approach established under
Article 60(1) EPC for the entitlement to a patent (application) and thus leave
this assessment to the jurisdiction of national courts.
60
The OD cannot follow the
approach proposed by the PP for the following
reasons, some of which were also submitted by the Os.
60.1
Firstly,
the OD observes
that the opinion of the Board in T 239/16 (D207), on
which the PP mostly relied for the present
line of argument, constitutes a nonbinding opinion in preparation of the oral
proceedings, where the Board intended to set the basis for a discussion in view
of a possible referral to the Enlarged Board of Appeal (cf. point 3 of the
preliminary opinion). In D207, the BOA thoroughly presented arguments in favour
of and against the EPO's power to address legal entitlement to the right of priority,
but it finally revoked the patent without deciding on the priority claim (and
the request for referring the question of the interpretation of Article 87(1)
EPC to the Enlarged Board of Appeal was finally withdrawn). So far no decision
of a BOA has ever taken this approach or even suggested it. On the contrary the
aforementioned established practice (point 54) has never been questioned to the
extent of the EPO's power to assess legal entitlement to priority.
60.2
Having
clarified this, the OD does not dispute that, as a rule, the EPO has no
competence to assess rightful ownership of
the priority right, i.e. inventorship. A dispute as to the right to claim
priority cannot be solved within the framework of the EPC since the EPO has no
jurisdiction to decide claims to the right to national patent applications or
priority rights derived therefrom (cf. J 11/95,reasons 4, last sentence). This is however
not in conflict with the established EPO practice but rather confirms it, as
explained in the following.
60.3
Under
the established EPO practice, Article 87(1) EPC has been regarded as sufficient
legal basis for the examination by the EPO of the legal entitlement to the
right of priority (cf. conclusions in the preliminary opinion in T 239/16 last
paragraph of point 3.4.1). In case of relevant state of the art in the priority
interval - the EPO assesses whether the requirements, both formal and
substantive, for a valid claim to priority have been fulfilled. The substantive
requirements include assessment of the "same invention" and the 12
months’ time limit for filing the later application. The formal requirements
include the declaration of priority and examination of whether the
applicant/proprietor, or his successor in title, was the applicant of the
priority application (cf. Guidelines for examination, edition 2017,A-lll, 6.1 and F-IV, 1.3; see also the
case law of the BOA T 493/06,reasons 8,T 788/05 reasons 2,T 008/96 reasons 3.1 and 3.2,T 5/05 reasons 4.2,T 62/05 reasons
3.1 to 3.3,G 1/15 reasons 4.2; see also in the patent literature Bremi, Singer/Stauder, EPU, 7th edition 2016,Art. 87,No. 55-57; Grabinski, Benkard, EPO, 2nd edition 2012,
Art. 87,No. 15,Moufang, Schulte,
Patentgesetz mit EPU, 10th edition 2017,
§41,No. 27; Visser, The annotated European Patent Convention, 25th
edition 2017,Article 87(1) no. 4
and 4.1Hesper, Singer/Stauder, EPU, 7th edition 2016,Art. 151,No. 164).
60.4
The
assessment of the formal requirements does not determine the rightful owner of
the priority right; rather it establishes whether the priority was validly
claimed by those named as applicants in the later application (applicant's status), irrespective of their actual
entitlement. Thus since it is not required to determine inventorship, also the
PP's argument on the difficulties in having to apply a multitude of national
laws (point 59.2 above) does not have a basis.
60.5
The
cited passages of the Travaux Preparatoires (BR/51/70) confirm the absence of
an obligation for the EPO to assess substantial entitlement to priority and
clarify that the validity of the claim to priority should not be examined by
the EPO in every case. However as a result of the discussion which took place
in the Patents Working Group in 1963,applicants who are not applicants of the priority application but
claim priority from it have to submit proof of entitlement only if the EPO
invites them to do so (cf. also the conclusion on the Travaux Preparatoires
cited in T 577/11,reasons 6.5.6). This
conclusion confirms the established practice that, at least when there is
relevant state of the art in the priority interval, the EPO could ask for proof
of succession in title (cf. Travaux Preparatoires, document 7669/IV/63, Article
74 and document 4419/IV/63).
60.6
In
the OD's opinion, the wording of Articles 87-89 EPC
and the system of priority \n patent law imply
that the EPO has been entrusted with the assessment of the validity of a claim
to priority, in order to determine the patentability requirements in respect of
novelty and inventive step. The wording of both the PC and the EPC - to the
extent they require that priority be formally claimed by the person filing the
first application, or by his successor in title - would be disregarded if the
EPO were to rely simply on the applicant’s declaration. If it were merely
presumed that any person filing a later application is entitled to claim
priority from a first application, the EPO would ultimately grant patents with
an unreliable state of the art, as any control over at least a
"relationship" between the first application and the one claiming
priority would be shifted entirely to national courts.
60.7
Legal
certainty and the protection of the interests of the public (against the
granting of invalid patents) require that priority is validly claimed, since
this is relevant for defining the effective date of a claimed invention and for
determining the relevant state of the art (cf. T 577/11,reasons 6.2; cf. also Ullmann, Das Prioritatsrecht im Patentwesen - Verbrauch oder Missbrauch? in
Mitt., 2009,201,205). It is true that a competitor is not
interested in the substantial entitlement to the invention, but rather in the
question of the valid claim to priority, i.e. which state of the art is
relevant for the application claiming priority. Since a valid claim to priority
requires the fulfilment of both formal and substantive requirements, it must be
concluded that both are to protect the interests of third parties. Legal
certainty would be negatively affected if only national invalidity proceedings
determined whether the applicant of a later application was not the
"same" as in the first application. This requirement cannot always be
established from the declaration of priority alone, if the applicant(s) of the
later application is not the same as in the first application.
60.8
The OD also does not share the
view that a reason in support of the PP's approach is given by the fact that a
challenge to the entitlement to the right of priority is, in most legal
systems, only allowed against a person alleging himself to be the owner (point
59.3 above). The question of the legal standing of a person in respect of a
given right is an issue distinct from the competence of an organ to decide on
such right.
60.8.1
In
addition, the OD
observes that even in certain national systems the
substantial and legal conditions for the validity of the claim to
priority may be
assessed in the course of nullity and/or infringement
proceedings if raised by any third party (cf. for instance in Germany where in
nullity proceedings even the condition of the “applicant’s identity",
required for the claim of priority, may
be reviewed if lack of novelty is raised
under § 21,Abs.1 Nr.1 and even without the
limitations on legal standing foreseen for entitlement claims according to § 21,Abs.1 Nr.3,see Rogge/Kober-Dehm in Benkard Patentgesetzt § 22 Rn 60 and § 21 Rn 32 and 33).
61
Finally,
in respect of the entitlement to the right of priority under Article 87 EPC,
the OD does not find a legal basis for applying the same approach established
under Article 60 EPC for the entitlement to a (patent) application (point 59.4
above).
61.1
The
principles of Article 60 EPC cannot be applied by means of analogy, because
there appears to be no lacuna legis in Article 87 EPC
which needs to be filled (G 1/97, reasons 3,b)). On the contrary it has been
consistently held that the provisions of Articles 87 to 89 together with Rules
52 and 53 EPC form “a complete, self-contained code of rules of law on the
subject of claiming priority for the purpose of filing a European patent
application" (cf. J 15/80,headnote I).
61.2
Further,
from a substantive point of view, the traditional distinction between
entitlement to the patent (application) and entitlement to the priority right
does not allow the same approach to be used for both. Whereas the validity of
the priority right under Article 87(1) EPC has a procedural relevance, i.e. it
serves to set the relevant date for the state of the art and ultimately affects
the patentability of the invention; the entitlement to the (patent) application
under Article 60 EPC does not as such affect the patentability of the invention.
In case of a challenge to the entitlement, proceedings are stayed according to
the procedure set by Article 61 and Rules 14 to 18 and 78 EPC.
61.3
In
addition, the division of powers between the EPO and the contracting states
behind Articles 60,61
and 138 EPC with regard to the entitlement to a patent application is
complemented by the legal fiction of Article 60(3) EPC. The provision that the
applicant shall be deemed to be entitled to exercise the right to a European
patent constitutes a clear basis for the EPO's lack of competence to go beyond
this legal fiction. It is noted that this legal fiction does not extend to the
right of priority; neither is there an analogous legal fiction foreseen in the
priority system under Articles 87 and 89 EPC.
62
The
OD would also like to comment on additional arguments brought up by the PP in
support of its proposed approach.
62.1
The
PP has alleged that an argument against the EPO's power to assess legal
entitlement to priority may derive from the difficulties of such assessment
when the validity of a priority claim of a patent application representing
prior art pursuant to Article 54(3) EPC is at stake (cf. also T 239/16,point 3.4.3). There will be difficulties
in obtaining evidence where the patentee of an earlier European right is not
party to the proceedings before the EPO. An earlier European application
constitutes state of the art under Article 54(3) EPC from the moment of its
publication, and it is fixed with the legal status it had in that moment (cf.
Gall, in Mitt. 998,No. 4.4, 174), independently from its later fate. Once it
has been published, the question whether a European application can be a
conflicting application under Article 54(3) EPC is determined firstly by its
filing date and the date of its publication. If the published European
application claims priority, the priority date replaces the filing date for
that subject-matter in the application which corresponds to the priority
application. Thus, when assessing prior art under Article 54(3) EPC, the EPO
necessarily has to consider the question of the validity of its claim to
priority. It is noted that this approach corresponds to the practice reflected
in the Guidelines for Examination and has also been adopted by the BOAs (cf. GL
G, IV-5.1. and T 493/06). In view of possible difficulties in obtaining the
relevant evidence, the assessment of legal entitlement to priority for a
document cited under Article 54(3) EPC may be based on a lower standard of
proof, i.e. a balance of probabilities.
62.2
The
OD also observes that the approach proposed by the PP is not even the one
implemented in the "more liberal" US system, which recognises the
legal entitlement to priority only where there is at least a
"relationship" between the applicants of a priority application and a
later application (e.g. common inventorship, employment, etc.).
11.3.1.1.2.1
Conclusion
on the PP's first line of arguments
63
On
account of the wording of Article 87 EPC (identical to Article 4 PC), in the
light of the Travaux Preparatoires and based on the relevance of the priority
claim for the patentability of the invention, the OD concludes that the EPO has
the task to assess the identity of the applicant, as well as the validity of
its succession in title. This conclusion is fully in line with the EPO established
practice and case law cited under point 60.3. Thus, the approach proposed by
the PP, that the EPO should neither assess the identity of the application, nor
the successor in title, cannot be followed.
11.3.1.1.3
The
PP's second line of arguments - Meaning
of the term '"any person,
under Article 87 EPC in case of joint/multiple applicants in a
first application
64
The
PP alleged that the word "any" in the context of Article 87 EPC
should mean "one or some indiscriminately of whatever kind", so that
any one of a plurality is sufficient. It supports this approach on the basis of
the ordinary meaning to be given to the
EPC provision pursuant to Article 31 Vienna Convention on the Law of the
Treaties, and concludes that all three texts ("Any person",
"Jedermann", "Celui qui”)bear such open, permissive meaning. On
account of the different wording of Articles 4A(1) and 4D PC (permissive form
“any person", in the French version "Celui qui” and
"Quiconque" respectively) and Articles 4F and 4G PC (prescriptive
form "the applicant", in the French version "le deposant"
and "le demandeur" respectively), the PP inferred that under the PC a
more permissive notion of who is allowed to claim priority was intended, as
compared to who may prosecute the subsequent application once filed, including
who may file a divisional application. If it were the intention of the
legislators of both the PC and the EPC to prescribe a strict "all
applicants" approach, this would have been made explicit.
64.1
Further,
having in mind the object and purpose for which the priority right was designed, i.e.
to assist the applicant in obtaining international protection for his
invention, the PP held that in the case of joint/multiple applicants this can
only mean to assist each of them indiscriminately. In this context protection
of third parties’ interests would be sufficiently guaranteed by the "same
invention" requirement, rather than by the "identity" of the
person claiming priority. Thus the established EPO practice of requiring all applicants
neither fulfils the purpose of the PC, as it often leads to the loss of the
priority right of all interested persons and often also of the patent, nor does
it protect the interests of third parties. Lacking a basis both in the language
of the PC and of the EPC for the requirement that a//persons who duly filed the
priority application (or their successors in title) be applicants on the
subsequent application, this element ultimately turns out to be an additional
requirement for the assessment of the validity of a priority claim, defeating
the purpose of the right of priority.
64.2
The
PP also drew attention to the US implementation of the PC, which merely
requires one inventor in common between the priority application and the
subsequent application (35 U.S.C. § 119(e) and US Manual of Patent Examining
Procedure (MPEP) section 1828).
64.3
The PP supported
these arguments with the legal opinions by Prof Straus (D 199),Prof Torremans (D197),
U. Scharen (D 125,Wie ist das Erfordernis der so genannten Anmelderidentitat
des Art. 87 zu verstehen?,GRUR 2016,446) and the legal literature of Ladas
{Patents, Trademarks and Related Rights, National and International Protection,
1975,Vol.I).
65
The
Os substantially maintained that the PP's new argument should be rejected in
view of a) the established EPO case law and the international practice, b) the
authoritative French text of the PC and c) the fact that coowners of a
priority right - considered in its whole disclosure - necessarily have to exercise
their right jointly.
66
The
OD has given particular consideration to the arguments and expert opinions in
support of the present approach. This approach might have practical benefits
for applicants. However, in view of its far-reaching implications the OD does
not consider it appropriate to deviate from the established practice.
66.1
Under
the principles of interpretation provided for in Articles 31 and 32 of the
Vienna Convention, which are to be applied when interpreting the EPC (cf. G 5/83,G 2/08,G 1/07,G 2/12,G 2/13,J 10/98),"A treaty shall be
interpreted in good faith in accordance with the ordinary meaning to be given
to the terms of the treaty in their context and in the light of its object and
purpose".
66.2
Following
these principles, the wording
of Article 87 EPC - in the three texts in which the EPC has been
authenticated (Article 177(1) EPC and Article 33(3) Vienna Convention) - does
not provide an exclusive indication as to whether the later application must be
filed by "all applicants" of the first or by “any one" of them.
This is valid despite the apparent more permissive German and English forms ("Jedermann", "Any person") rather
than the restrictive French one {"Celui
qui") and in view of the fact that the three texts are
presumed to have the same meaning (cf. also J 8/85,reasons 5.1 and Bruchhausen, GRUR Int.
1983, 205). The use of "any person" in other provisions of the EPC
does not provide further indications. The same is true with regard to the
wording of Article 4A(1) PC, although here the French text should
be considered as the prevailing one (Article 29(1 )(c) PC).
66.3
Neither
is a clear reading provided in one sense or the other, by referring to the
Travaux Preparatoires of both
treaties. The Travaux
Preparatoires to the EPC do not contain any specific reference to
the meaning of “a person..." (under the wording of the EPC 1973) / “any
person..." (under the wording of the EPC 2000) and rather focus on the
question of the extent to which the EPO shall examine the entitlement to
priority (see point 60.5 above). The change in the English version of the EPC
2000 (from “a person" to “any person") did not imply a change in the
law, but was merely intended to reflect the exact wording of the PC, whereas
the German and French versions remained unamended. The Travaux
Preparatoires to the PC determine the meaning of “any
person" (as well as of successor in title) by referring to all persons
entitled to claim application of the Convention according to Articles 2 and 3,that is, nationals of a country of the
Union and nationals of countries outside the Union, who are domiciled in a
country of the Union (cf. Bodenhausen, Guide to the
application of the Paris Convention, Geneva 1968,Art. 4A(1) note (b)). No separate interpretation
applicable to the case of joint/multiple applicants of the first application is
given.
66.4
However,
a basis for the so-called
‘‘all applicants,,approach
can be found from the
first commentaries to the PC onwards and has been subsequently confirmed
without exception both in the EPO practice and case law, as well as in the
relevant national case law. This shows a certain degree of established
harmonisation between the EPC and national laws:
66.4.1
The
requirement of identity of applicant between the first and the later
application
is, according to Wieczorek, undisputed and thus
valid both in the case of a sole applicant and in the case of multiple
applicants of a first filing (cf. Die Unionsprioritat
im Patentrecht, Koln 1973,S. 128 und 146).
66.4.2
This
approach was adopted also by the practice of national patent offices right
after the implementation of the PC (cf. decisions of the German Patent Office
of 16.12.1905,Bl.f.PMZ 1906,127; of 16.01.1907,Bl.f.PMZ 1907,127; of 25.10.1917,Bl.f.PMZ 1917, 120; decisions of the
Austrian Patent Office of 13.06.1912,OPatBI. 1913,679; of 20.12.1912,OPatBI. 1913,1148; decision of the Czech Patent Office
of 25.09.1931,Mitt. 1932,157) and has been maintained also later
(cf. High Court of Justice of England and Wales, Edwards Lifesciences
AG v Cook Biotech Incorporated, [2009] EWHC 1304(Pat), para 95
and 99 with reference to T 788/05; HTC Corporation v
Gemalto S.A., [2013] EWHC 1876 (Pat), para 131 and 132). The only
deviation to this requirement was introduced during the revision of the PC at
the Washington conference of 1991 by adding the notion of “ou son ayant
cause" in order to enhance flexibility for patent applicants. By
reaffirming that overly strict solutions would hardly be in accord with the
spirit of the Union treaty, no further corrective measure was considered
necessary to ameliorate the legal position of patent applicants under Article
4A(1) PC in its present version (Stockholm Act).
66.5
The
EPO established practice, as reflected in the Guidelines
for
examination expressly requires the identity
of applicant. In particular,
in the case of joint applicants filing the later European
patent application, it is sufficient if one of the joint applicants is the
applicant or successor in title to the applicant of the previous application.
There is no need for a special transfer of the priority right to the other
applicant(s), since the later European application has been filed jointly. The
same applies to the case where the previous application itself was filed by
joint applicants, provided that all these applicants, or their successor(s) in
title, are amongst the joint applicants of the later European patent
application (cf. A-lll, 6.1 and F-IV, 1.3; however see A-
III,
6.9
and 6.10).
66.5.1
This
requirement has been upheld in several Boards
of Appeal
decisions and has so far never been deviated from or subjected to
a review. A group of decisions, addressing the question of when an application
may be regarded as the "first application" under the meaning of
Article 87 EPC, considered the applicants’ identity as a requirement to be met,
just as the "same invention" condition. In particular it was held
that the required identity for the applicants originates from the priority
right being part of the applicant right. When the
first application is filed by two applicants, the priority right belongs
simultaneously and jointly to the two applicants, who thus
constitute a legal unity unless one of them decides
to transfer his right to the other applicant (T 788/05,reason 2). Similarly, in an earlier case
it was acknowledged that the priority right can only be exercised jointly
by the applicant of the first application or by his successor in title (T 5/05,reasons 4.2). Applications claiming the
same priority filed separately by different applicants of the priority
application would constitute state of the art to each other under the meaning
of Articles 54(2) and 54(3) EPC (the latter provision however only for European
applications as originally filed).
66.5.2
The
"all applicants" approach was confirmed also under the opposite
circumstances (subsequent application filed by more applicants than the first
one), where it was held that the right of priority could only be exercised jointly
by all owners, or by their successor(s) in title (T 1933/12,reasons 2.3).
66.5.3
The
"all applicants" approach was acknowledged as the starting point of
another group of decisions, concerned with the question of a valid assignment
of the priority right. Stressing the fact that the right to claim priority
originates from the applicant of the first application, so that, in principle,
the applicant has to be the same for the first and the subsequent applications,
the Boards concluded that where the first application has been filed jointly by
two or more applicants, the right of priority belongs
to them jointly (T 205/14,reasons 3.3 and T 517/14,reasons 2.4, see also T 382/07,reasons 9.1).
66.5.4
There
is agreement in the legal literature on
the required identity between the applicant(s) of the priority application and
the applicant(s) of the European application claiming priority from it (cf.
Grabinski, Benkard, EPU, 2nd edition 2012,Art. 87,No. 15; Bremi, Singer/Stauder,
EPU, 7th edition 2016,Art. 87,
No. 57 and 63;
Moufang, Schulte, Patentgesetz mit EPU, 10th
edition 2017, §41,No. 27; Visser, The annotated European Patent Convention, 25th
edition, 2017,Article
87(1),No. 4 and 4.1; Article 87(4),No.4; Ullmann, Das Prioritatsrecht
im Patentwesen - Verbrauch und Missbrauch, Mitt. 2009,201).
66.6
Despite
the widely recognised "all applicants" approach under the EPC, the OD
has given special consideration to the different opinions by Scharen (D125),
Prof. Straus (D199) and Ladas (cited above) in favour of allowing a valid
priority claim when at least one of the persons who
filed the first application (or their successor in title) is an applicant for
the later European patent application. It is not disregarded that the wording
of the relevant provisions (both in the EPC and in the PC) does not clearly
exclude this interpretation (see point 66.2 above). The provision on the succession
in title under Article 87 EPC would still be applicable for situations in which
a different person, alone, files the subsequent application, without the
applicant(s) of the first.
66.7
The
co-ownership of an intellectual property right is subject to the same rules as
the co-ownership of any other right. On account of the distinction between the ownership of
the right of priority and its exercise,
it appears that each co-owner is entitled to an ideal share of
the whole right (communio pro indiviso) and may
exercise the co-owned right either jointly or individually, depending on the
arrangements agreed or established by the law. Whereas an act of disposition of the common right - such as an
assignment, or the constitution of a guarantee - in principle requires a joint
act by all co-owners, and one of them alone is not entitled to validly dispose of the common right, it is not excluded that each
joint owner may in principle exploit the right individually, for instance to maintain
it in force. In the context of the priority right the question whether, in case
of co-owners, the filing of the subsequent application requires a joint act
depends ultimately on the arrangements chosen by the "co-owners", or
on the applicable law.
66.8
Based
on the above, the filing of an application claiming priority from a first
application may be interpreted as an act of exploitation
of the common right - rather than an act of its disposition - and consequently
could be exercised individually. This interpretation would be consistent with
the results of the harmonisation studies on co-ownership of patent rights (cf. AIPPI Question O194 on “The Impact of Co-Ownership of Intellectual
Property Rights on their Exploitation", Summary Report and
the Resolution, Yearbook 2007/II, pages 445,446 - Executive Committee of
Singapore, 5-10 October 2007). In principle,
individual exploitation of an IP right by one of the joint owners is allowed as
long as it does not prevent the other joint owners from equally exploiting the
same right. With reference to the priority right this approach
would mean that nobody would be prevented
from exploiting the same priority right, as a whole, as long as each of the
co-applicants has the right to file separately a subsequent application
claiming the whole priority from the first application. The question whether
the filing of the later application violates the others’ rights, as indicated
by Scharen (D125), depends on the individual case and would probably occur only
in case of a filing in bad faith, with the purpose of excluding the others (see
also D 207 point 3.4.8., however the remedy of national entitlement proceedings
would be available). It is noted that in the present case, O1 has cited D141-D148
in order to show that one of the co-applicants of the priority applications -
Maraffini - did not agree with not being mentioned as applicant in the PCT
application underlying the opposed
patent. On the other hand, the OD recognises that the
PP's second approach possibly protects the legitimate interest of a joint
applicant wishing to keep that right valid and ongoing, even if the
co-operation of other joint applicants is missing.
66.9
However,
allowing each joint applicant, separately or in different combinations with
other co-applicants, to file a patent application claiming priority from the
first application would lead to a multiplication of proceedings with identical content. The OD cannot disregard that the logical consequences of this
approach would run counter to the interests of patent offices and the public
both in terms of procedural inefficiencies and of avoiding multiplication of
protections for the same subject-matter, having different patent owners. Some
of the disadvantageous results for the public have been also mentioned by Prof
Melullis (D 162),as for instance the effect of licensing by one owner for the
other owners; the possibility of multiple infringement claims and the relative
effect of a settlement in infringement proceedings. All these consequences do
not appear compatible with the systems of international and European patent
laws, which include measures to minimize such multiple patenting, as for
instance by recognising the prior art effect under Article 54(3) EPC. Even
following the majority opinion that under the EPC there is no such doctrine of
exhaustion of the priority right (T 15/01,reasons 28 and 41) the resulting risk of multiple patenting
inherent in this approach would have far reaching consequences for the system.
66.10
It
may be questioned whether these considerations are only theoretical or whether
account of them is properly to be taken under the instrument of the priority
right (or rather whether it is already properly addressed under Article
54
EPC).
Nevertheless, the OD as an administrative instance
has the duty to apply the EPC, following the interpretation given by the BOAs
and to follow, under normal occurrences, the practice established by the
Guidelines for examination in order to ensure legal certainty and
predictability of the rules of law governing the priority claim. Whereas a
deviation from the Guidelines may in principle be justified if the
circumstances of a given case are exceptional (cf. T 1388/10,head note V and reasons 5; J 27/94,reasons 5), the case at stake does not present
particular special features. There is no exceptional circumstance in the fact
that the priority application is a US provisional application or that the
subsequent PCT application was filed by fewer applicants than the first
application. It is observed that US provisional applications are given no
special treatment under the EPC. Provided a US provisional application has been
duly filed, it is recognised as giving rise to a right of priority under
Article 87(1) EPC and establishing an effective filing date (cf. Notice of the
President of the EPO of 26.01.1996 OJ EPO 1996,
81).
11.3.1.1.3.1
Conclusions
on the PP's second line of argument
67
The
proposed approach to consider priority as validly claimed even when any one of the joint applicants of the first application
is applicant of the later application would protect the legitimate interest of
a joint applicant wishing to keep a priority right valid even when the
co-operation of the other joint applicants is missing. It would also lead to a
result consistent with the EPO practice of recognising priority as validly
claimed in the opposite situation, where the applicant(s) of the first
application is(are) amongst the applicants of the later application (de facto sharing the right of priority, cf. T 1933/12,
reasons 2.4.). Such
interpretation of the PC had also been adopted by the US Patent Office.
Following the distinction between ownership and exercise of a right, the filing
of an application claiming priority may be regarded as an act of exploitation
(exercise) of the (jointly owned) right of priority, which would be possible
also individually. However this approach would have far reaching consequences,
in particular the risk of multiple patenting. Although this effect would not
violate the first filing requirement of the PC, which had the sole aim of
avoiding a chain of priority applications with different dates for the same
subject (see Bodenhausen, cit. above, Art. 4A(1), point (d)),still the
conformity
with the system of avoiding a potential multiplication of proceedings with
identical content is doubtful. For these reasons, the OD considers it not
appropriate to deviate from the established practice by following the
applicant's second line of arguments.
11.3.1.1.4 The PP's third line of arguments - The meaning of “any person
who has
duly filed” and the application of
national law
68
As a
third line of argument, the PP submitted that the determination of “any person
who has duly filed" under Article 87(1) EPC should be subject to the
national law of the place of filing of the priority application. Following the
EPO established practice to determine the "successor in title" under
national law, the PP considered it appropriate to determine “any person who has
duly filed" also under the applicable national law, i.e. the law of the
place in which the earlier application was filed (so-called lex originis), in this case US law. The PP also submitted
that US law, instead of Article 87 EPC, should apply in the present case to the
determination of priority in view of Article 8(2)(b) PCT. US law requires that
to be an "applicant" one must have either contributed to the
invention claimed in the application oneself, or have derived the rights from a
contributing inventor. The determination of the contribution to the invention
is made by the US patent attorneys prosecuting the application, in this case Mr
Kowalski (D120, D121) and Dr. Uthaman (D122). Reference is made to the legal
opinions by Hoffmann (D200, para 3-7); Prof. Straus (D199, para 8.3-8.5 and
9.2) and Bremi (D 198,para
6-8,10-11 and 15).
68.1
The
PP alleged that this approach should be followed in view of the special
circumstances of the present case, namely that the priority application was a
US provisional application disclosing multiple inventions and that some of the
inventors/applicants of the priority application (Mr. Maraffini, Mr. Bikard and
Mr Jian) did not contribute to the invention disclosed in the later PCT
application. Therefore, according to US law the latter could not qualify as
"any person who has duly filed" according to Article 87 EPC. Rather
the US provisional application should be considered in such a case as a bundle
of applications, each disclosing one invention and each filed only by those
inventors who contributed to that invention (cf. also the declarations of J.
Doll (D118,D119,D203), Judge Michel (DUO, D 202),S.B. Maebius (D 206),
Prof. J.R: Thomas (D204) and J. Pooley (D
205).
69
The OD cannot follow the PP's arguments for the following
reasons:
69.1
The
national law of the country of the Union where the first application is made
applies to the meaning of “any person who has duly filed" under Articles
4A(1), A(2) and A(3) PC only for the purpose of according a date of filing (cf.
Bodenhausen, Guide to the application of the Paris Convention for
the protection of industrial property, 1968,Article 4A(2), point (c)). The PC only
deals with the formal aspects of claiming priority and does not refer to a
condition of substance, in the sense that the person filing the first
application should be entitled to the invention (see Bodenhausen, cit., Article 4A(2) point (a) and 4A(3) point (b); see
Ladas, cited above, § 260; see Teschemacher, Anmeldetag und
Prioritatstag im europaischen Patentrecht, GRUR Int. 1983,
695). Thus, by a
regular national filing is meant any filing that is adequate to establish the
date on which the application was filed in the country concerned, whatever may
be the subsequent fate of the application. This approach is consistent also
with the requirements for accordance of a date of filing under Article 5 Patent
Law Treaty, which does not foresee an entitlement to the invention in the
person filing the application.
69.2
The wording of the
PC and of the EPC confirms that the act of formally filing the first
application gives rise to the right to claim priority and not a substantive
entitlement to the invention claimed. In case of multiple applicants filing the
first application, the PC sees this act as one single process.
69.3
The case law of the Boards of Appeal has established that for the
application of the right of priority, a fundamental principle of the EPC system
is to consider neither the status of an inventor nor his concrete contribution
to specific subject-matter of the application. A different approach would be
contrary to the scope of simplification of proceedings, as intended by the EPC
legislator when choosing to focus solely on the status of an applicant in the
EPC system both in Article 87(1) and in Article 60(3) (cf. T 5/05, reasons 4.2;
T 1933/12,reasons 2.5; T 577/11,reasons 6.5.7, last paragraph; see also
Beier-Straus, Probleme der Unionsprioritat im Patentrecht,
GRUR Int. 1991, 255,section II, d., particularly point 23; and
Bremi, epi information 2010,17,
point II. 4).
69.4
Although
recent decisions (see T 517/14,reasons 2.7.3 and T 205/14,
reasons 3.6.3.) have
confirmed that the organs of the EPO are in principle not barred from applying
national law governing an incidental question, such as assessment of the
successor in title within the meaning of Article 87(1) EPC (cf. T 1008/96,reasons 3.3.; T 160/13,reasons 1.1; J 19/87 reasons 2; T 493/06,reasons 9 and 11; T 517/14 reasons 2.7.3
and T 205/14,reasons 3.6.3), the
same BOAs have never suggested applying national law to any aspects of the
"act of filing" other than the formal matter of simply according a
filing date to the application. This is indeed a completely different question
from that of how and in which form a transfer of the rights of priority is to
be made. That the "standards of national law cannot be applied in relation
to other requirements of a potential priority application", but for the
determination of the date of filing within the meaning of Article 87(1) EPC was
also confirmed in T 107/09 (cf. point 23.1 of the reasons).
69.5
The
OD also does not consider that the present determination of priority should be
controlled by US law in view of Article 8(2)(b) PCT (internal priority), which
should have precedence over the EPC. This provision is relevant for the
priority from a US provisional application for a later US non- provisional
application (which would then be subject to 35 U.S.C. § 119(e)). The present
case is instead subject to Article 8(2)(a) PCT (external priority), which
determines that the PC - as implemented in Articles 87-89 EPC - applies for
priorities claimed for a state different from the country of the first filing.
70
The
PP's proposed approach - that the priority right should be acknowledged for the
entitled "applicant" of the first application - substantially leads
to the application of national law for the determination of the original
ownership to the invention. This approach mixes up the status of the applicant
for the purposes of Article 87 EPC with matters of substantial entitlement and
is thus not consistent with the wording and scope of the PC and of the EPC. As
was unanimously acknowledged under the first line of argument (cf. section II. 3.1.1.2) this determination
has been traditionally excluded from the EPO's competences, primarily due to
the complexities of having to apply several different national laws and carry
out the necessary investigations.
70.1
If there were an obligation of a
patent office to examine entitlement questions, the simplification adopted with
the Paris Convention would become meaningless (cf. Wieczoreck, Die Unionsprioritat im Patentrecht, 1975,p. 129
ff.; Grabinski in Benkard,
EPU, 2012,Artikel 87,Rn 3 and
25; Ruhl, Unionsprioritat, 2000,Rn. 184,259;
Moufang in Schulte,
Patentgesetz mit EPO, 10th edition, 2017,§ 41 Rn
27 and 28: "It is
not sufficient that the applicant of the subsequent application has a right in
the invention of the priority application" and "Identity of inventors
between the first and the later application is not required,).
70.2
The
lack of a harmonised definition of inventive concept as well as of a harmonised
interpretation of the term "inventor" in the member states of the PC
led to rejecting any reference to "inventor" for the claim to
priority when drafting the PC.
70.3
In the
present case, the assessment of inventorship under US law would involve complex
determinations, for instance the contribution to an invention in a not
insubstantial or insignificant manner, as developed by US case law, which
clearly cannot be performed by an administrative authority such as a patent
office (cf. D 120,D
122).
70.4
Whereas
it might be admissible under US law that priority (provisional) applications
include independent inventions distributed among the inventors/ applicants
according to their contribution, the PC adopts the principle that a first
application gives rise to one priority right, and the applicant(s) of the first
application has(have) the entire right of priority. Accordingly, the EPC system
does not provide for a different treatment of rights of priority on different
subject-matters vested in different applicants.
11.3.1.1.4.1
Rather,
following the interpretation of the PC and the EPC as established in EPO
practice, both the public and patent offices may rely on the information in the
patent registers and available from inspection of the public file. National
law, such as US law, thus applies only to the information available in the
recordsConclusions on the PP's third line of arguments
71
Under
the PC and the EPC the right to claim priority derives from the formal filing
of the first application, irrespective of the status of inventor. The PP's
submissions to determine “any person who has duly filed an application" as
a matter of ownership under the national law of the place of first filing
actually pertain to the right to the invention and the resulting right to the
patent, which a patent office is not competent to assess. Since this approach
would disregard the wording and the scope of Article 4PC and Article 87 EPC,
the OD sees no reason to depart from the established interpretation given by
the BOAs that substantive entitlement is not a basis for the right of priority
(see points 69.2 and 69.3 above). The OD also considers that the PP's arguments
that "any person" and "duly filed" should be determined
under US law, in the light of the PP's submissions actually constitute a single
argument.
71.1
Actual
entitlement to an invention/contribution to an invention may be taken into
account by civil law instruments, which are available to permit a valid claim
of a priority right according to Article 4 PC and Article 87 EPC (such as a
transfer of priority right, or an authorisation to claim a priority right or
even the filing of a later application in the name of all inventors/applicants
of the first and a later transfer of rights back to the only
"contributors"). In the present case it would have also been possible
to conclude separate assignments between the parties limited to the European
part of the PCT application in order to comply with the formal requirements
(cf. also Bremi in epi Information 1/2010,17,section IV; Teschemacher, GRUR Int., 1983,
701).
11.3.1.2 Conclusions of the OD on the legal
entitlement to priority
72
In
view of the above reasons, the OD has come to the conclusion that none of the
three approaches proposed by the PP can be allowed. In particular, due to the
potential legal implications of the date of (first) priority in the assessment
of patentability or validity of a patent application or patent, it is
imperative that applicants and the public at large be provided with legal
certainty and predictability with respect to the rules of law governing the
subject of claiming priority (cf. T 517/14 reasons 275).
72.1
Thus
according to the established practice the identity of the applicant (and the
validity of a transfer of the right of priority) must be assessed. In such
assessment the EPO should however refrain from considering the status of an
inventor or his concrete contribution to the subject-matter of an application
under national law.
72.2
For
the same reasons of legal certainty and predictability of the applicable rules, the OD,in its function as administrative first instance, does
also not deviate from the established practice regarding the applicants’
identity, so- called "all applicants" approach, as it is currently
understood by the EPO.
73
By
applying the established practice to the present case, it appears that the
priority rights from Mr. Zhang, Mr. Cong, Mr. Hsu and Mr Ran in relation to P1
and P2 have been validly claimed in the PCT application in view of the applicants’ identity. The OD is also satisfied that proof of a transfer of priority
rights from Mr. Habib, Mr. Lin and Mr. Cox to the Broad Institute and the MIT
has been submitted with regard to P1,P2, P5 and P11,with assignments dated 10.12.2013 (DX3,
DX4 and DX5) and thus before the filing date of the PCT application
(12.12.2013). Evidence is on file also for the assignments of the priority
rights on P11 from Mr Platt and Mr Sanjana to the MIT (DX5) on 10.12.2013.
74
However
no evidence has been filed regarding the transfer of the priority rights of Mr.
Maraffini in relation to P1,P2, P5 and P11 to one of the applicants
mentioned for the PCT application, before its date of filing. The same is true
for the priority rights of Mr. Bikard and Mr. Jian in respect of P5 and P11. Thus their priority rights have not been transferred into the PCT application
before its filing date.
75
For
these three inventors, Mr. Maraffini, Mr. Bikard and Mr. Jian, an assignment of
those priority rights dated 7.02.2013 and 12.12.2013 to the Rockefeller
University (DX1 and DX2) has been submitted. However the latter is not an
applicant of the PCT application.
75.1
An
assessment of whether the inventor/applicant Maraffini or his successor in
title, The Rockefeller University, were entitled to be named as applicants in
the PCT application, in view of the alleged lack of contribution to the
invention, would be equal to assessing entitlement to the EP application under
Article 60(3) and 61 EPC, for which the EPO is clearly not competent.
75.2
This
was confirmed also by the submissions filed by the PP on 31.10.2016 as well as
by 09 on 18.11.2016 and by 04 on 23.12 2016 regarding the discovery proceedings
initiated by 01 in the US according to 28 U.S. code § 1782.
75.3
For
the same reasons the OD decided that the results of the arbitration proceedings
between The Rockefeller University and The Broad Institute over the dispute on
inventorship and ownership due to the position of Mr Maraffini were not prima facie relevant to the issue of the valid claim of
priority. Thus the corresponding document, which the PP wanted to file on the
second day of the oral proceedings, was not admitted into the proceedings.
Indeed the argument that Mr Maraffini was not an applicant of the PCT
application was already on file.
76
Finally
the recording of a change in the name of the applicants Zhang, Cong, Hsu and
Ran to Harvard College dated 23.05.2014 according to Rule 92bis.1 PCT is not
relevant for the purposes of the transfer of priority rights under Article 87
EPC. The co-applicants Zhang, Cong, Hsu and Ran, who were named after the PCT
filing date, were entitled to validly claim priority at the date of filing.
77
In
view of these considerations, the OD concludes that based on the evidence on
file, priority has not been validly claimed from P1,P2, P5 and P11.
11.3.2Novelty over D3 and D4:
78
In
view of the OD's conclusion that the opposed patent does not have a legally
valid claim to priority from P1,P2, P5 and P11,a number of documents become relevant prior
art. During the oral proceedings, only novelty of the patent as granted over
only D3 and D4 was discussed. Thus, a conclusion on novelty of the opposed
patent as granted was taken only insofar as D3 and D4 are concerned:
79
Together
with the summons to oral proceedings, the OD provided the preliminary and
non-binding opinion that claims 1 -6 and 12-17 of the opposed patent lacked
novelty over D3 and D4 for the following reasons:
The Os argue
that D3 is novelty destroying for claims 1-8 and 12-16. In particular the use
of a tracrRNA sequence of 64 nucleotides and a guide sequence of 23 nucleotides
is disclosed in Figure 1A. The OD preliminarily and non-bindingly agrees with
the Os that a composition, which falls within the scope of claim 1,is disclosed in Figure 1A; that a vector
system, which falls within the scope of claim 2, is disclosed in page 823,
middle column, read in combination with page S7; that claim 3 is not novel in
view of page 823, middle column, lines 9-10; that claims 4-5 are not novel in
view of pages S16-S18; that claim 6 lacks novelty in view of page 823,middle column.
However, the
vectors used in D3 for expressing the chimeric RNA sequence and the Cas9
protein are T〇P〇 vectors (see page S7), lentivectors are
only used for the GFP target (see page S7). Thus, the OD preliminarily and non-
bindingly is of the opinion that claims 7-8 are novel over D3.
D3
(see Figure 2) discloses genome engineering in multiple cell types of the AAVS1
locus using the vectors mentioned above, it is clear that a target
polynucleotide is modified, that a donor DNA is introduced in the cleaved DNA,
that the donor DNA is modified compared to genomic sequence, that it takes
place by homologous recombination (HR). Thus, the OD is of the preliminary and
non-binding opinion that claims 12-16 lack novelty in view of D3.
D4:
The Os
object that D4 is novelty destroying for claims 1-4,7-8, 12-13 and 17. The OD
preliminarily and non-bindingly finds that the composition illustrated in
Figure 1C has a tracrRNA of 64 nucleotides and falls within the scope of claim
1. Moreover, the sgRNA and the Cas9 protein are expressed from vectors and the
Cas9 protein has a NLS at the C-terminal position (see page S1). It is shown
that the complex of sgRNA and Cas9 when coexpressed in a cell are capable of
introducing indels at the target sites. Thus, the OD is of the preliminary and non-binding opinion that claims
1-4 appear to lack novelty over D4. However, the reference to viral vectors on
page 228,right
column is not so that it represents a disclosure of an embodiment of D4 and the OD therefore
finds that claims 7-8 appear to be novel over D4. The uses in in-vivo genome
engineering and the creation of zebrafish embryo is disclosed in the
abstract of D4 and the OD therefore finds that also
claims 12-13 and 17 lack novelty over D4.
The PP did not at any stage of the
proceedings provide any arguments why the claims of the opposed patent would be novel over D3 and D4 and the OD therefore does not see any reasons to deviate from its
preliminary opinion and comes to the conclusion that claims 1 -6 and 12-17 lack
novelty over at least one of D3 or D4.
80
The OD concludes that the opposed patent does not meet the
requirements of the EPC and therefore decides that it is revoked in accordance
with Article 101(2) EPC.
Thank you for posting this interesting decision. I have two questions that are not mentioned in the decision.
ReplyDelete1. If the first application has only one single applicant, but the single applicant decides to mention a second applicant (e.g. based on a contract between the parties) during the priority year, must both applicants be mentioned in the subsequent application for a valid priority claim? In my view yes, because the first applicant is the first filer. However, a look in the register would indicate two applicants and a purely formal assessment would indicate the priority is not validly claimed. The legal
2. If the first application is filed by a first and a second applicant and before filing, the second applicant has a contact with the first applicant in which he transfers all rights connected with the application to the first applicant (in short: he just desires to be mentioned as co-applicant), is the priority claim valid if the subsequent application is only filed by the first applicant? Maybe in this case, the contract could be filed as evidence for a valid priority claim?
What do you think?
Sorry for the mistake. My view on the first question is no, and not yes, i.e. the second applicant does not have to be mentioned.
ReplyDelete@Anonymous
ReplyDeleteThe answer to both your questions is that the applicants of the second application (claiming priority from the first application) must include all the persons that, at the date of filing the second application, share the right to claim the priority of the first application.
Note that the right to claim the priority of an application can be transferred separately from the right to be the applicant of the application.
So it is not important that the original filer of the priority application is among the applicants of the subsequent application if in the meantime the right to claim the priority of the first application has been transferred.
Thanks for your answer to my question. Still, I am not sure:
DeleteArticle 4A.(1) PC requires that
"Any person who has duly filed an application for a patent ... or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed"
In case 1., one could argue that the first applicant is the "person who has duly filed the application" and thus enjoys the right of priority. One could also argue that the legal community between the first applicant and the second applicant is the "successor in title". One could then interpret the "or" in A. 4A.(1) PC to provide for both to enjoy the right of priority. Or does the "or" mean "either...or..."? Furthermore, is a co-applicant only mentioned in the register if the application and/or priority right has been transferred (in part) to the co-applicant so that the new holder of the right is the legal community with the co-applicant?
In case 2., one could argue the second applicant has never been in the legal community forming "any person who has duly filed an application" because has waived all rights connected to the invention/application before the filing date. However, I agree that for an application to become "duly filed", it is strictly speaking not necessary that the applicant has any rights to the invention.
The part "or his successor in title" simply clarifies that the right to claim priority is transferable. Once validly transferred, it is no longer a right of the tranferer but of the transferee.
ReplyDeleteThe European patent register mentions the co-applicants, but they are not necessarily the same as the persons that jointly hold the right to claim the priority. Also, the European patent register gives information about European patent applications, and the priority application often is not a European patent application.
If I'm not mistaken, there are still unresolved questions at least about what laws (i.e. of what country) to apply to determine the person(s) who (jointly) hold the right to claim the priority of a first application for a subsequent European application. But as far as I know what I wrote in my previous comment is pretty much settled.
Thanks again for your response.
DeleteHowever, in the case in which a legal community between the first applicant and the subsequently entered second applicant is not seen as a "successor in title" of the first applicant, the priority right has obviously remained on the side of the first applicant (even in view of the that a second applicant is mentioned in the register).
Thus, it seems to be reasonable to assume that in this case, ONLY the first applicant has to be mentioned as applicant when filing a subsequent application for a valid priority claim.
Again, the only relevant question is who holds or hold the right to claim priority when the subsequent application is filed.
ReplyDeleteOriginally, this is the person or these are the persons who filed the first application. But the right can be transferred. Such a transfer can be from one person to many other persons (even including the original person) or from many persons to a single person, etc.
The persons who jointly hold the right when the subsequent application is filed must all be among the persons filing that application for the priority claim to be valid.
If a priority application is transferred during the priority year from person A to persons A and B and nothing is said in the contract about the right to claim priority, then it seems reasonable to me that the right to claim priority was transferred as well (but there may be case law seeing this differently, I don't know). If this is correct, then the subsequent application must be filed by A and B together. A alone cannot validly claim the priority and neither can B alone.
I don't see what role the (European patent) register plays here unless the priority document happens to be an EP (usually not the case).
The term "legal community" seems a bit vague in this context. A and B don't form a legal community (unless they get married) but they can be joint applicants and they can also be joint holders of the right to claim priority, and it is possible that these two rights are not held by the same groups of persons because the right to the application can be transferred separately from the right to claim priority.
Thanks a lot for your explanation. It has removed some uncertainties on my side. I also like the terms "joint applicants" and "joint holders" more than the term "legal community". Said terms also appear to explain better that the right to claim priority is joint right between A and B and that A and B have the right (only) together, but not individually.
DeleteI also agree that strictly speaking, the (national or EPO) register is of no relevance because it may not reflect the actual substantive situation. Rather, in case of doubt regarding the validity of the priority claim, for the assessment of the validity, it seems to be important who is mentioned on the priority certificate or whether there is any contract between the original holder of the right and his successor in title.