Decision G 1/22 and G 2/22 of the Enlarged Board of Appeal

Exciting news from the Enlarged Board of Appeal (EBA) of the EPO on referrals G1/22 and G2/22 dealing with the issue of assessment of priority entitlement.
 
In short, the EBA decided that the EPO is competent to do such an assessment under the autonomous law of the EPC and without recourse to national laws.
 
Additionally, in view of the purpose of priority rights to facilitate international patent protection, the fact that the EPC lacks any formal requirements for the transfer of priority rights, and the fact that the filing of a subsequent application by a different applicant necessitates cooperation from the priority applicant, the EBA concluded that the entitlement to priority should be presumed to exist. This presumption should be rebuttable to allow for rare exceptional situations in which the priority applicant may have legitimate reasons not to allow the subsequent applicant to rely on the priority, such as circumstances related to bad faith behaviour or to disputes before national courts on the entitlement to the subsequent application.
 
Additionally, in the context of a joint PCT application, the joint filing is considered a sufficient proof for an implied agreement on the joint use of the priority right of one of the co-applicants, and this implied agreement can further reinforce the presumption of entitlement to priority.
 
In the EBA’s own words, the rebuttable presumption concerning priority entitlement will substantially limit the possibility of third parties, including opponents, to successfully challenge priority entitlements before the EPO.
 
More info in the press communiqué of the EPO:
Press Communiqué of 10 October 2023 concerning decision G 1/22 and G 2/22 of the Enlarged Board of Appeal | Epo.org
 
We are analysing the decision in detail and will report in more detail soon.