Wednesday, October 11, 2023 G 1/22 and G 2/22 decided - Competence of EPO to assess whether a party is entitled to priority & possible implicit agreement of a transfer of priority

Yesterday, a Press Communiqué was published as the Enlarged Board had issued its decision in consolidated cases G 1/22 and G 2/22 and the decision became available in the register, and today on the Recent Decisions page.  The Enlarged Board concluded, in the order, that:

"I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority." 
"II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation 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."

Tuesday, February 01, 2022 Referral by T 1513/17 and T 2719/19 - Priority from an earlier application having different applicants for different states

In the present case (T 1517/17, consolidated with T 2719/19), the patent proprietor filed an appeal to the interlocutory decision of the opposition division revoking its patent. The application on which the patent was granted had originally been filed as an international application under the Patent Cooperation Treaty (the PCT application). It claims priority on the basis of the US provisional patent application (the priority application). The priority application was filed in the name of the two inventors H. Wang and Z. Zhong. The PCT application names the same two persons as inventors and as applicants with designation for the US only. It also names as applicants Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated States except the US. The patent in suit names Alexion Pharmaceuticals, Inc. as patent proprietor and R.P. Rother, H. Wang and Z. Zhong as inventors.

The Board decided to refer the following questions to the Enlarged Board of Appeal:
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 [note: which seems likely, in view of it being a substantive requirement in Art.87(1) EPC]

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 reason 37, the Board also indicted that "a separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed."

Wednesday, January 24, 2018 T 282/12 - Partial priority and "the first application": partial first application

May a priority application and an even earlier application filed by the same applicant partially relate to the same invention, just as the priority application and a patent claiming priority therefrom may partially relate to the same invention (whereby the latter may benefit from partial priority under G 1/15)? If so, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application and priority would only be valid for that part, but not over the full scope of the claim. This was the key point in this decision.

Monday, March 27, 2017 T 577/11 - Entitlement to priority; transfer of priority right

In this case, the Board goes very deep into the issue of the entitlement to claim priority by a successor in title. In particular: when does the actual transfer need to take place? Could the EPO recognize a retroactive transfer if a national law would allow that?

The answer: strict - the actual transfer must have been completed before the priority is claimed. 

Catchword:

1. Continuation of the appeal proceedings after first oral proceedings before the board with the scheduling of second oral proceedings is not, as such, a reason for admitting new submissions filed after the first oral proceedings (see Reasons, point 2.3).

2. If the debate on a particular topic had been closed without announcement of a decision on the matter, the board has discretion over whether or not it re-opens the debate and over the extent to which it does so (see Reasons, point 3.1).

3. For a claimed priority to be valid pursuant to Article 87(1) EPC 1973, the applicant of a subsequent application claiming priority from an earlier application (priority application) who is not the person who filed the priority application must, when the subsequent application is filed, be that person's successor in title in respect of the priority application or of the right to claim priority. A succession in title that occurs after the filing date of the subsequent application is not sufficient to comply with the requirements of Article 87(1) EPC 1973 (see Reasons, point 6.5).

4. Where the applicant of the priority application and the applicant of the subsequent application contractually agree that (only) economic ownership ("economische eigendom" under Dutch law) of the priority application and the right to claim its priority is to be transferred to the subsequent applicant, this is not sufficient to consider the latter a successor in title within the meaning of Article 87(1) EPC 1973 (see Reasons, point 6.6.2).

Friday, March 10, 2017 T 1434/13 - When priority becomes important: D1 is published in the priority year

 

Fig. 2 of D1 (WO2006/095202)

Only in few number cases the right to priority is extensively examined - in general only if there is prior art that has been published in the priority year. In this opposition appeal there was a document on file (D1) that was published in the priority year of the disputed patent. An interesting thing to mention is that document D1 is a PCT application of the same applicant as the owner of the disputed patent. In the opposition proceedings, the Division decided that the patent did not enjoy the right of priority from the two priority documents and, thus, that the claim as granted lacked novelty. In this appeal, the Board repeated the work of the Opposition Division. The Board wrote down an interesting reasoning because different aspects played a role: features were disclosed in the figures, features were not disclosed as a whole in a single embodiment and it seems that essential elements of the priority documents are not the claims (in other words: the priority documents disclose different inventions). 

Thursday, February 02, 2017 G 1/15 (2) - The decision on partial priority

The Order was already issued by the Enlarged Board in November last year, but the full decision and its reasoning became available only just now. The Enlarged Board considered the EPC priority provisions of Art. 87(1), 88(2)-(3) and 89, Paris Convention Priority and the FICPI Memorandum in detail to come to its decision. The right to claim priority and its effect/ purpose (reason 4) led the Enlarged Board to conclude that a generic claim encompassing alternative subject matter may not be refused partial priority, provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect. 

Wednesday, July 29, 2015 T 0837/13 - Priority: identical technical problem, identical technical solution

In this opposition appeal, the importance of identity or lack of identity of the technical problem(s) and its solution(s) for validity of priority was discussed, and in particular also to which level. 

Friday, April 24, 2015 T 1437/10 - Pri, pri, priority

This case concerns an appeal against a decision of the Examining Division to refuse European Patent Application 99943715.5. In its decision, the Examining Division reasoned that the right to priority of the present application was invalid and that, as a consequence, the subject-matter of the main and auxiliary request was not novel over the disclosure of document D1, being published within the priority period.

Of interest is that the priority document is a US provisional application which was filed without claims. At issue in the present appeal is whether the description of the priority document provides a right of priority for the present - relatively broad - independent claim, and in particular, whether later sections of the priority document, which provide various details, limit the general concept described in an earlier section of the priority document.

Summary of Facts and Submissions

(...)

IV. Oral proceedings before the board were held on 12 February 2015.

(...)

IX. The appellant essentially argued as follows:

The priority document was disclosing at least two inventions. The first one being the general design rule for an interleaver of any size N as disclosed in section 2 of the priority document. Other inventions were to be seen in the sections dealing with the details and with the optimisation of the general design rule as disclosed in section 4 and 5 of the priority document, respectively. In section 2 of the priority document, it was explicitly stated that sections 4 and 5 merely were disclosing the details and the optimisation of the broader invention of section 2. Thus, a separate right to priority was existing for the general interleaver design rule of section 2 of the priority document. Hence, claim 1 according to the main request was entitled to the right of priority.