17 January 2020

EPO Board of Appeal rejects proposed changes in European priority practice and confirms revocation of important CRISPR patent

At a packed hearing in Munich, Board 3.3.8 in five-member form upheld the decision of the Opposition Division revoking EP-B-2771468 – an important CRISPR patent belonging to the Broad Institute, MIT and Harvard – for lack of novelty over intervening art due to loss of priority. The appeal in case T 844/18 was of significance not only to the CRISPR community, but also to users of the European patent system more generally due to the questions of law it raised. 

The case turned on the issue of legal entitlement to priority. The PCT request for the application from which the patent derived had not included all of the applicants for the US provisional applications from which priority was claimed, or their successors in title. The proprietors argued that this did not matter, for three innovative reasons, any of which would, if accepted, mark a radical shift in European practice. 

Firstly, the proprietors argued that the EPO is not empowered to assess legal entitlement to priority, in the same way that the EPO cannot determine entitlement disputes. 

A second line of argument, which only became relevant if the first did not succeed, was that the EPO was wrong to assess legal entitlement to priority on the basis of the ‘all applicants’ approach, according to which all of the applicants named on a priority application, or their successors in title, must be named on the later European filing in order to introduce priority rights.  The proprietors argued that the approach limited access to international protection and was therefore contrary to the object and purpose of the Paris Convention. They advocated an approach requiring only one applicant / successor in title in common.

A third line of argument, which only became relevant if the second did not succeed, was that the EPO should determine the person who ‘duly filed’ a priority application under the national law of the state in which the priority application was filed. According to the proprietors, the omitted applicants were not, under US law, persons who had duly filed the provisional applications with respect to the subject matter claimed in the PCT application, or successors in title thereto, because they had not contributed to that subject matter or derived rights from an inventor who had contributed to that subject matter.

The opponents, one of which was represented by James Wilding and Alex Elder of Mathys & Squire, argued that EPO practice in assessing legal entitlement to priority aligns with the object and purpose of the Paris Convention, finds support in the wording of the legislation and in the established case law, and should therefore continue. 

Events took an interesting turn at the start of day three of the hearing when, having heard the parties on only the second argument, the Board indicated that it was minded to seek guidance by referring questions to the Enlarged Board of Appeal in relation to all three arguments. The opponents protested that they should be heard on the first and third arguments before a decision to refer was taken, and so the hearing continued with a discussion of the remaining arguments. 

After hearing the parties, the Board concluded on the fourth day that it could decide the case without the need for a referral. The Board went on to reject all three of the proprietors’ arguments. In upholding the decision of the first instance, the Board opted to follow established EPO practice. Whilst that did not work to the proprietors’ advantage, it does help maintain certainty within the European patent system.