12 October 2023

Hotly anticipated Enlarged Board Decision regarding priority is here

As explained in our earlier article, questions were referred to the Enlarged Board of Appeal last year in G1/22 and G2/22 (consolidated in the referral), to further clarify the requirements for there to be entitlement to the priority of an earlier patent application. A Preliminary Opinion was released by the Enlarged Board (discussed here) and now the Decision is out.

To recap, two questions were asked. The first question generally asked whether the EPO should even be assessing the validity of a transfer of a priority claim from one party to another. The second was regarding what happens when applicant(s) entitled to the priority of the earlier application are not named as applicants for the European part of a subsequently filed international (PCT) application, but are named as applicants for the US part of that same PCT application. Can the subsequent European application, derived from the PCT application, be considered as having a valid priority claim?

The Decision has effectively answered “Yes” to the first question and has held that the applicant benefits from a rebuttable presumption under the EPC that the applicant claiming priority is entitled to do so.

With respect to the second question, the Decision generally supports the joint applicants’ approach.

The Headnote of the Decision is 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.

The default position that an applicant is entitled to claim priority in the above circumstances is a departure from current practice and may significantly affect EPO Opposition and Appeal Practice where priority rights are routinely challenged. How “substantial factual indications to the contrary” is to be interpreted will be key in developing future case law.

The EPO’s Press Communication can be read here and the Decision here.