Wednesday, January 27, 2021 T 0407/15 - Earlier application was assigned, but no proof that priority right was transferred too

In the present case, the validity of priority was important in view of a  disclosure in the priority interval. The priority applications were filed jointly by three persons (the inventors), and identify "The University of Western Ontario" as assignee in a section entitled "Assignee information". The current Euro-PCT application was initially filed as an international PCT application by The University of Western Ontario, and indicates these same three persons as inventors. Despite having been invited to do so by the Board, the appellant failed to provide any evidence that a transfer of the priority right took place and that it was entitled to claim these priority rights. The Board argued that: "Both US applications 61/035 540 and 61/035 777 contain a section entitled "Assignee information", identifying "The University of Western Ontario" as assignee. This is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant." "This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings."

Monday, January 20, 2020 Breaking news - Decision in case T 844/18 on the CRISPR gene editing technology

Last week, oral proceedings took place in T 844/18 on the CRISPR gene editing technology and a decision was taken at the end of the oral proceedings. On Friday, the news message below was posted on the EPO website.

Wednesday, April 17, 2019 T 0725/14 - Valid transfer of rights results in invalid priority claim

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?

Tuesday, October 30, 2018 T 0969/14 - partial priorities' transfer

This is an interesting appeal lodged against an opposition decision to revoke a European patent on the ground of novelty under Art. 54(3), EPC.
The situation is as follows:

D16 is a European patent application filed on 27/06/2000 by applicant Chiesi.
D14 is a PCT application filed on 17/04/2001 by Chiesi claiming priority of D16.
EP (contested patent) is filed by applicant Vectura on 17/04/2001 claiming also priority of D16.
The case relates to two inventions A and B, where A encompasses B. EP claims A and D14 claims B. D16 discloses both A and B.

Companies Chiesi and Vectura had a joint-venture where it was agreed about the ownership of the respective IP. The rights of ownership of D16 was assigned from Chiesi to Vectura before filing of EP. However, B's right of priority remained with Chiesi in a re-assignment of the priority right from Vectura to Chiesi.  

The result is that Vectura owns a valid priority right only for (A-B) but claims A which is broader. The consequence is that claim 1 of EP is not novel over D14 under Art. 54(3), EPC because D14 validly claims priority of D16 for B, thereby confirming the decision of the Opposition Division.  

When Vectura files a fourth auxiliary request in appeal proceedings disclaiming B from A, i.e. based on (A-B), for restoring the priority right, it is too late. The BoA does not admit said request into the appeal proceedings. 

The logical conclusion is that an applicant cannot transfer a partial priority right and at the same time keep it for claiming in a broader context.

Tuesday, May 29, 2018 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.  

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).