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."

Friday, September 21, 2018 T 525/13 - Generalizing from US provisional application

Cat on Microwave

This opposition appeal illustrates the limitations when claiming priority from a US provisional application. While a 'manual cook button' is considered to be implicitly, yet unambiguously and directly derivable from the US provisional application, the claimed microprocessor was considered to represent a different invention as the US provisional application only described a microcomputer.

(In this case, the Board also considers an alleged substantial procedural violations to be merely "a number of unfortunate events", which was communicated by the Board to the parties earlier:

"... it appears to the Board that the alleged substantial violations are rather to be seen as a number of unfortunate events. It is in particular unfortunate that the opposition division did not react sooner to the special request of the representative of the appellant. On the other hand the Board cannot read from the appellant's letter of 13 December 2012 that if the EPO would not be able to accommodate the representative of the appellant, she would not be able EPO Form 3350 6/7T0525/13-3.5.02 to attend the oral proceedings. It is also unfortunate that the respondent, even though there is no legal obligation to do so, did not forward a copy of its submission of 13 December 2012 directly to the appellant, knowing that the appellant would have to obtain a translation and that it would not be unlikely that the letter was not received by the appellant from the EPO before the Christmas holidays. Finally it is standard practice that examiners do not speak directly with a party in inter partes proceedings and all communication with the EPO goes via the formalities officer.")