23 March 2023

G 1/22 and G 2/22: Update on the referral of questions concerning formal entitlement to priority to the Enlarged Board of Appeal

The Enlarged Board of Appeal has issued a preliminary opinion suggesting that it is minded to approve something close to the so-called ‘PCT joint applicants approach.’

As explained in our earlier article, the Enlarged Board has essentially been asked to decide whether, firstly, the EPO has the power to determine whether a priority right has been validly transferred to a successor in title, and secondly, whether naming the applicant for a first filing as applicant for the US only in a PCT application claiming priority thereto is enough for the purposes of introducing priority rights into the European designation. Oral proceedings have been scheduled for 26 May 2023 and the Enlarged Board has now issued its preliminary opinion on the issues.

First question

The Enlarged Board considers the first question admissible as it touches upon fundamental questions of law. This in itself is interesting because the tribunal could have taken the position that the first question did not require an answer in view of established case law and practice, according to which the EPO does have the power to decide entitlement to priority.

The Enlarged Board further addresses the scope of the first question and considers that it encompasses all situations where the applicant claiming priority is not clearly identical to the applicant of the priority application. This is because entitlement to priority issues are also said to arise outside the context of succession in title.

As regards how the first question should be answered, the Enlarged Board merely identifies a number of further questions that might usefully be discussed at the hearing. These are summarised as follows:

  • Has the case law always implicitly or explicitly supported the EPO’s competence to assess entitlement to priority?
  • Does the provision governing the EPO’s lack of competence to determine entitlement to a European application have any impact on the interpretation of the provision governing entitlement to priority?
  • Should the EPO assess entitlement to priority ex officio during examination proceedings?
  • Could entitlement to priority be assessed on the basis of the autonomous law of the EPC, i.e. without invoking national law?
  • If the EPO has the competence to assess an applicants’ entitlement to priority, is it also competent to assess their entitlement to the priority application?

These further questions suggest that Enlarged Board is far from making up its mind. Indeed, the tribunal notes that opinion is also evenly divided between ‘yes’ and ‘no’ in the amicus curiae briefs and among the parties to the proceedings.

Second question

The Enlarged Board considers the second question admissible because it is relevant in many proceedings before the EPO and is a matter of ongoing discussion in the case law. 

As regards how it should be answered, the Enlarged Board says that it tends to support an affirmative answer (assuming there is an affirmative answer to the first question) on the basis that the joint filing of a PCT application (“i.e. with the consent of all applicants”) could serve as evidence implying an agreement on the sharing or transfer of the priority right. This approach seems to align closely with the PCT joint applicants approach, although problems could presumably arise if there is evidence proving the absence of any agreement, or worse, a disagreement between the PCT applicants vis-à-vis the sharing or transfer of priority rights. 

The Enlarged Board further notes that the written submissions have almost unanimously supported an affirmative answer to the second question. An affirmative answer would certainly be good news for many patentees!

We will provide further updates as the Enlarged Board referral progresses.