01 February 2022

G1/22 and G2/22: Board of Appeal refers questions on formal priority entitlement to the Enlarged Board of Appeal

In a development that could have a significant impact on how priority is assessed in Europe, EPO Board of Appeal 3.3.4 has just referred the following two questions to the Enlarged Board of Appeal (EBA) in case T 1513/17 (consolidated with T 2719/19) concerning formal entitlement to priority:

I. 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?

II. 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?

The first question asks whether the EPO has the power to determine whether a priority right has been validly transferred. According to established case law and practice, the EPO does have that power, as recently confirmed by Board of Appeal 3.3.8 in the CRISPR/Cas appeal case, T 844/18 (see our news items here and here). However, that power has also been questioned ex officio in communications from other Boards. The failure to introduce priority rights into a European application can of course have devastating consequences for validity, and therefore, if the EBA should answer the first question in the negative, then this would represent a significant relaxation of the EPO’s priority rules. Given established case law, it is possible the EBA will decline to answer the first question.

The second question essentially asks 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. This scenario commonly arises when a US provisional application is filed in the names of the inventors, and a subsequent PCT application is filed naming those inventors as applicants for the US and someone else as applicant for other jurisdictions. EPO opposition divisions have recently been applying what the Board in T 1513/17 calls the ‘PCT joint applicants approach’, whereby the EPO merely checks whether all applicants on a priority application are named as PCT applicants, irrespective of whether they are designated as applicants for Europe or whether priority rights were validly transferred to the applicants for Europe. The Board in T1513/17 concluded that the validity of PCT joint applicants approach is not clear-cut and that guidance from the EBA is required.

It is possible that the EPO will opt to stay pending proceedings in cases where formal entitlement to priority is determinative, following the approach taken in other recent referrals.

We will provide further updates as the EBA referral progresses.