New Enlarged Board of Appeal referral on formal priority entitlement
The Board of Appeal in T1513/17 has referred two important questions on formal priority entitlement to the Enlarged Board of Appeal (EBA)

The Board of Appeal in T1513/17 has referred two important questions on formal priority entitlement to the Enlarged Board of Appeal (EBA). The outcome of this referral may have a profound impact on how priority is assessed at the EPO.

The two questions that have now been referred to the EBA are provided below:

  • I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
  • II. If question I is answered in the affirmative

Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC in the case where

  1. a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
  2. the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
  3. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

The first question asks whether the EPO is competent to assess the transfer of priority rights. In explaining its rationale for referring this question, the Board of Appeal has highlighted that this issue had previously been raised by several Board of Appeal communications and legal commentaries. The Board stated that this is now a convenient opportunity for a final decision on this point.

If the answer to the first question is “yes”, then the second question asks whether the joint-applicants approach (JAA) to formal priority entitlement is valid. The JAA is a simple analysis that Opposition Divisions have recently been applying to PCT applications that have inventors named as applicants for the US only, and which claim priority from US applications that were filed in the names of the inventors. This typically involves checking whether all of the applicants on a priority application are among the PCT applicants, regardless of whether or not they are designated as applicants for Europe. Thus, in these scenarios, Opposition Divisions have considered there to be no need for separate evidence demonstrating the transfer of priority rights to the (usually corporate or institutional) applicant(s) designated for Europe. In some instances, Opposition Divisions have cited the unitary character of the PCT application to support their position. In view of the importance of the JAA to the case under consideration, as well as EPO practice in general, the Board has asked the EBA to consider whether this approach is valid.

We will provide further updates on the EBA referral as it progresses.