24 March 2023

Preliminary Opinion from the EPO Enlarged Board regarding priority

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.

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?

Oral proceedings had been set by the Enlarged Board for 26 May 2023.  Now, in advance of those oral proceedings, the Enlarged Board has issued a communication to provide information about points it considers likely to be addressed at those proceedings.

Interestingly, the Enlarged Board does not provide any explicit indication in the communication of what answer it is tending towards for the first referral question. However, it does indicate relevant points for discussion at the oral proceedings, including whether assessing entitlement is a more recent (since 2010) development in case law at the EPO, and what impact Article 60(3) EPC should have.  Article 60(3) EPC states that in proceedings before the European Patent Office, the applicant shall be deemed to be entitled to exercise the right to a European patent.

The Enlarged Board does state that it is inclined to answer the second referral question in the affirmative, which is, perhaps, also an implicit indication of its tendency to answer the first referral question in the affirmative.  It states that its basis for tending to support a positive answer for the second referral question is the concept that when a PCT application is jointly filed, i.e. with the consent of all applicants, there is an implied agreement from the applicant owning the priority rights (named for the US, in the referral question) that the applicant not owning the priority rights (named for the European part) can share or be transferred the priority rights.

If the Enlarged Board follows this reasoning when it issues the final decision, it would appear to represent a significant loosening of the strict priority requirements at the EPO.  However, parties can, and no doubt will, try to influence the Enlarged Board’s opinion in writing in advance of the oral proceedings, and at the oral proceedings themselves.  It is likely to be another six months or so before we learn of the Enlarged Board’s final decision.