The EPO Enlarged Board of Appeal has handed down its decisions G1/22 and G2/22 considering the law on formal priority entitlement and has held that the applicant benefits from a rebuttable presumption under the EPC that the applicant claiming priority is entitled to claim priority.
The EPO Enlarged Board of Appeal (the highest instance in EPO proceedings) has handed down its decisions 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.
On the first question, the decision confirms that the EPO is competent to assess the transfer of priority rights but, in a significant shift from prior practice, the Enlarged Board has decided that the applicant benefits from a rebuttable presumption under the EPC that the applicant claiming priority is entitled to claim priority. That presumption exists notwithstanding the priority applicant not being identical with the subsequent applicant. This decision has the potential to change EPO opposition practice profoundly and block many speculative challenges to priority entitlement which had become routinely deployed by opponents in the EPO.
As regards the second question, the decision also holds that such a rebuttable presumption applies where the European patent application derives from a PCT application and the so-called “joint applicants approach” has been confirmed as valid.
We will follow this newsflash with further analysis in due course. The full order of the Enlarged Board of Appeal is as follows:
ORDER
For these reasons, it is decided that the questions of law referred to the Enlarged Board of Appeal are answered as follows:
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.
James Warner, Cameron Marshall, and Daniel Goodman represented Novartis in these Enlarged Board of Appeal proceedings. 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.
