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11 February 2022

New referral to the EPO Enlarged Board seeking priority clarification

According to Article 4A(1) of the Paris Convention, enacted as Article 87(1) in the European Patent Convention (EPC), the priority right to an earlier patent application may be enjoyed by the applicant of the earlier application or their successor in title. Over the years, the European Patent Office (EPO) have developed a strict attitude when assessing the entitlement of an applicant or proprietor to claim priority to an earlier application. The consequences of this can be vital for the fate of the later application, because a lack of entitlement on the filing date of that later application can often be impossible to rectify, and disclosures made between the filing dates of the earlier and later application may become fatal for the later application or patent.

The EPO has announced (see press release here) that questions have been referred to the Enlarged Board of Appeal to further clarify the requirements for a valid entitlement to priority. The referral questions seek to clarify 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?

In addition, the Board of Appeal has also asked the Enlarged Board, in the first referral question, whether the EPO should even be assessing the validity of a transfer of a priority claim from one party to another.

The specific questions referred are as follows (G1/22 and G2/22, consolidated in the referral):

  1. 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?
  2. 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?

We should expect a decision on the referral from the Enlarged Board within the next year or two. In the meantime, this referral might be considered a useful reminder to carefully consider priority claims when filing a European application, whether the filing is of a direct European application or a PCT application. Of course, the Patent Attorneys at Venner Shipley will be happy to assist you with that consideration.

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