Friday, November 13, 2020 T 844/18 - Crispy priority

You can't slice up a priority right, also not with the boards

Last week, the EPO Boards of Appeal issued a press communiqué of 6 November 2020 concerning case T 844/18.

The press communiqué  is cited integrally below (emphasis added):

Press Communiqué of 6 November 2020 from the EPO Boards of Appeal concerning case T 844/18

6 November 2020

Technical Board of Appeal 3.3.08 issued the written decision in case T 844/18 confirming the revocation of a patent related to CRISPR gene editing. The revocation was based on a lack of novelty due to an invalid claim to priority.

Background

The European patent EP 2 771 468  held by the Broad Institute and others relates to the CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) gene editing technology. CRISPR gene editing is a genetic engineering technique which allows inter alia to modify the genomes of living organisms in a targeted manner. The technology has been developed by several competing research institutions. Numerous patents and patent applications concerning this technology are pending before the EPO.

In the appealed decision the opposition division had revoked the patent. It had found that priority had not been validly claimed and that the claimed subject-matter was therefore not novel.

Key considerations

The applicants for the patent in suit were not the same as those for the priority application. Rather, one applicant was missing from the patent application and had not transferred its priority right to the remaining applicants.

The core legal issue is governed by Article 87(1) EPC and can be described as follows:

A and B are applicants for the priority application. A alone is the applicant for the subsequent application. Is a priority claim valid even without any assignment of priority right from B to A?

Under Article 87(1) EPC, any person who has duly filed an application for a patent or their successor in title shall enjoy a right of priority during a period of twelve months from the date of filing of the first application. Article 87(1) EPC corresponds to Article 4A of the Paris Convention for the Protection of Industrial Property.

The first question addressed by the Board was whether entitlement to priority should be assessed by the EPO or rather in entitlement actions before national courts. The Board concluded that Article 87(1) EPC both empowered and obliged the EPO to assess the validity of a claim to priority.

The second question was how to interpret the expression "any person" in Article 87(1) EPC. Under the established practice both at EPO and national level, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application, allowance being made for successors in title. The Board confirmed this so-called "all applicants" approach.

A third question concerned whether national law (in this case US law) governs the determination of "any person" who has "duly filed" under Article 87(1) EPC. On this point, the Board concluded that the Paris Convention was the law which determines who "any person" is.

For these reasons, the Board found that priority had not been validly claimed from several US provisional applications. Therefore, documents became relevant prior art over which the claimed subject-matter was not novel. The Board thus dismissed the patent proprietors' appeal against the opposition division's decision to revoke the patent.

The Board also stated that a referral to the Enlarged Board of Appeal was not necessary, because Article 87(1) EPC had been interpreted consistently by the EPO and the questions raised could be answered beyond doubt by the Board itself.

Contact

Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org

 

This press release is a non-binding document for media use. The full text of the decision is available here.

The file wrapper can be found here. 

Also refer to our blog posts of 20 January 2020, "Breaking news - Decision in case T 844/18 on the CRISPR gene editing technology" (here) and of 29 May 2018, "EP2771468 - Decision of OD in Crispr case (first instance)" (here). Photo obtained via Pixabay by Couleur under CC0 license (no changes made).

Wednesday, August 01, 2018 J 0010/17 - No restoration of the right of priority

Should a European representative take a Communication from the Receiving Section regarding a "missing" request for restoration of priority during the international phase at face value, or should he have realized that - in any case - the restoration of the right of priority based on the criterion of unintentionality has no effect before the EPO as designated/elected Office - and have responded accordingly?

This appeal concerns a decision of the Receiving Section rejecting the request to reverse the finding that a European patent application does not enjoy a right of priority with respect to the claimed priority. The application had been filed as an international application under the PCT with the USPTO as receiving Office (rO). As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the rO. The rO decided to restore the right of priority based on the finding that the failure to file the international application within the priority period had been "unintentional".

After entry of the application into the European phase, the Receiving Section of the EPO issued a reminder communication stating (by ticking of corresponding boxes) that "a request for restoration of the right of priority pursuant to Rule 49ter.2 PCT is necessary for the following reasons: No request for restoration of the right of priority has been filed pursuant to Rule 26bis.3 PCT during the international phase". A time limit was set by the Receiving Section.

By return letter, the applicant's representative stated that "the request for restoration of the priority right was already filed in the international phase ... and duly granted by the Receiving Office". The Applicant requested confirmation of the priority right being in force.

The EPO then issued a notification of loss of rights under Rule 112(1) EPC stating that the "decision by the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO (R. 49ter.1(b) PCT) and no valid request under Rule 49ter.2 PCT has been filed". In an accompanying letter, the Receiving Section took the view that, even though the incorrect box had been crossed in the reminder communication, the intention of reminding the applicant had been expressed.

It was pointed out that this reminder communication had also stated that the decision of the receiving Office to restore the right of priority based on the criterion of unintentionality has no effect in proceedings before the EPO. The item had not been crossed but the professional representative should have been aware of this position of the EPO.

The applicant requested a decision from the Receiving Section and appealed this decision. In the statement setting out the grounds of appeal, the appellant referred to the incorrect information given in the reminder communication and argued that the principle of legitimate expectations should apply in the present circumstances. The appellant requested that the decision under appeal be set aside and asked "to receive a new, corrected invitation for filing a request for restoration of the right of priority including a new time limit".

The Board found that the mistaken information in the EPO communication (that no request for restoration of the right of priority had been filed in the international phase) had no bearing on the conduct of the European representative as to whether a request should have been filed in the European phase in the absence of proof of the alleged instruction. In the absence of such an established link between the erroneous information and the loss of the priority right, the principle of legitimate expectations cannot apply. Accordingly, the finding of the Receiving Section that the application does not enjoy a right of priority was found justified.

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). 

Tuesday, March 08, 2016 T 2542/12 - Can a strain be enabled without a deposit?

Presumably healthy Cod,  escaping from a cod trap

Claim 1 of this Examination appeal concerns a bacterium causing Cod's Syndrome in cod. The strain was deposited by the inventor before the priority date. Moreover, the priority document, of which the inventor is not the applicant, refers to the deposit.  Unfortunately the depositor had not properly authorized the applicant to refer to the deposited material. The board does not allow the applicant to benefit from the deposit to argue the enablement of the invention. (The decision refers to Rule 28(1)(d) EPC 1973, corresponding to Rule 31(1)(d) EPC 2000).

As the claims in this appeal make no mention of the deposited strain, the Board needs to decide if a Claim to a bacterium is enabled in the absence of a deposit. The Board admits that this is possible but continues to set a high bar for this to be allowed. The situation regarding the deposit is discussed in reasons 18-31.