About a year ago, the Enlarged Board of Appeal issued its decision in G 1/22 (consolidated with G 2/22), which significantly relaxed the EPO’s approach to ‘same applicant’ priority. Under the old approach, life could be tough: a priority claim was deemed invalid if a proprietor was unable to show, when challenged, that the applicants for the subsequent application included all of the applicants for the priority application or their successor(s) in title at the time the subsequent application was filed. Then the sun came out: the Enlarged Board held that there is a strong, rebuttable presumption that the priority applicants approve of the subsequent applicants’ entitlement to priority, regardless of any difference in names. See our earlier report here.The CRISPR cases provide a striking example of this shift in the law. Prior to G 1/22, Board of Appeal 3.3.8 upheld a decision of the EPO opposition division revoking an important CRISPR patent belonging to Broad, MIT and Harvard on the basis of intervening art that only became citeable because the subsequent applicants did not include one of the priority applicants or its successor title (and notwithstanding a plea from the proprietors for the EPO to take a more relaxed approach to ‘same applicant’ priority). See our reports of T 844/18 here and here. Now, post-G 1/22, the same issue has come before Board 3.3.8 (albeit in a slightly different composition) in the context of a divisional of the revoked patent in case T 2360/19 (consolidated with T 2516/19 and T 2689/19, where the same issue also arose). How did the proprietors fare? Much better. The Board held that the omission of the relevant party from the subsequent application was of no consequence in view of the strong presumption in favour of priority entitlement. Essentially the same EPO tribunal with essentially the same set of facts before it came to the opposite conclusion on priority.T 2360/19 is also noteworthy because of the Board’s finding that evidence of a dispute between the proprietors and the omitted party was not sufficient to rebut the strong presumption in favour of priority. The dispute arose because the proprietors had filed the subsequent application (the PCT application from which the European family derived) without naming one of the priority applicants (Luciano Marraffini) or his successor in title (the Rockefeller University) on the PCT request form. The dispute was settled in 2018 by an arbitrator who decided that Marraffini should not be named as an inventor and Rockefeller should not be named as a proprietor of the PCT application. However, the opponents argued that the existence of the dispute proved there was no agreement on the transfer of priority rights belonging to Marraffini/Rockefeller. The Board was of the contrary view – it saw the dispute as supporting the presumption of validity of the priority claim, because Marraffini and Rockefeller had wanted to be named in the PCT application, and therefore it was not credible that either of them would have acted in a way to invalidate the priority claim, particularly when the very purpose of the arbitration settlement was to safeguard the inventions made by Marraffini and others. The Board furthermore identified the settlement as an ex-post (retroactive) agreement on the transfer of priority rights, in line with the Enlarged Board’s suggestion in G 1/22 that the EPO should accept such agreements.Interestingly, the settlement was not actually decisive to the outcome in T 2360/19 though. The Board held that the result would have been the same even in the absence of the settlement evidence, because “As also reiterated in G 1/22 … There is always a party who is entitled to claim priority, even if this party has to be determined in a national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here) … only the rebuttable presumption of a priority right guarantees that … this right is not ‘lost’ somewhere in an inventorship dispute.” The logic seems to be that, to the extent such a dispute has any bearing on the claim to priority of a patent, then the presumption is that the outcome of the dispute will entail preservation of the priority claim. This chimes with the Enlarged Board’s comment in G 1/22 that the EPC explicitly foresees the ex tunc assignment of priority rights in the context of disputes on the right to the patent before national courts, and that, in view of legal certainty, third parties can never fully rely on the invalidity of a priority claim.What would it take to rebut the presumption that the subsequent applicants are entitled to claim priority? The Enlarged Board gave the example of party acting in bad faith. Thus, if evidence is provided that subsequent applicants filed a subsequent application without the agreement of a priority applicant or its successor in title, and that the priority applicant/successor does not and never did agree to the priority claim, then this might be enough to rebut the presumption. However, that is very different from the situation in T 2360/19, where the proprietors filed a statement from Rockefeller after the arbitration was concluded confirming that the university had been aware that the other proprietors were filing a series of PCT applications on CRISPR technology based on an inventorship determination, and that the university agrees that the correct parties were named on those PCT applications.The case in T 2360/19 has now been remitted to the opposition division for examination of the other grounds of opposition. The decision, and that in each of the other consolidated cases, is likely to have broader significance for the proprietors though, because they omitted Marraffini/Rockefeller from many other PCT applications that contain the same priority claims. Whether the proprietors fare well before the opposition division following remittal remains to be seen – Board 3.3.8 recently issued a preliminary opinion in which it found a lack of enabling disclosure in the priority application for a similar CRISPR patent belonging to the University of California and others, which the proprietors then self-revoked, as reported here.