The EPO Enlarged Board of Appeal (the highest instance in EPO proceedings) is considering the law on the topic of formal priority entitlement, after certain questions were referred by a Technical Board of Appeal. Our previous article discusses the referred questions in more detail (in summary, firstly, whether the EPO has competence to assess the transfer of priority rights, and secondly, whether the “joint applicants” approach is valid), and the potential profound impact of the outcome.  

During the written stage of proceedings, amicus briefs were filed by various interested parties. The Enlarged Board then issued a communication in March 2023, noting the preliminary view that the “PCT joint applicants” approach was probably valid, perhaps with certain conditions. The communication did not give a firm view on whether the EPO is competent to assess priority, and the Enlarged Board asked the parties to focus on five specific questions on this issue: 

1. Has the case law always been (implicitly or explicitly) supporting the EPO’s competence to assess entitlement to priority?  
2. Does Article 60(3) EPC have no impact on the interpretation of Article 87 (implying answering question I with ‘yes’) or should the latter be understood in light of the former (implying answering question I with ‘no’)? 
3. Should entitlement to priority be assessed ex officio in examination proceedings? 
4. Could an assessment of entitlement to priority be made on the basis of the autonomous law of the EPC (i.e., without invoking national law)? 
5. If the EPO has the competence to assess entitlement to priority rights, is it also competent to assess the entitlement to the priority application of the respective applicant?  

On Friday 26th May 2023, the Enlarged Board held a hearing and heard arguments on the two referred questions and the five specific questions above.  

Carpmaels & Ransford took the lead on the first round of oral submissions. The Enlarged Board also heard submissions from the other parties involved and the President of the EPO. The proceedings were fairly subdued, and the Enlarged Board did not ask any questions. Chairman Josefsson closed the proceedings before lunchtime, and promised a decision ‘as soon as possible’. 

The three Carpmaels & Ransford attorneys at the hearing were James Warner, Cameron Marshall, and Daniel Goodman. Their involvement continues a long history of Carpmaels & Ransford’s involvement in Enlarged Board of Appeal proceedings including, for example, G2/88 on the novelty of use claims, and G7/95 on adding fresh grounds of opposition.