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Formal Entitlement to Priority: Board of Appeal 3.3.04 refers questions to the Enlarged Board of Appeal (G1/22 and G2/22)

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28 April 2022

In two related cases (T1513/17 and T2719/19) Technical Board of Appeal 3.3.04 referred questions concerning formal priority entitlement to the Enlarged Board of Appeal (G1/22 and G2/22). A formal priority entitlement means that the party claiming priority has the right to do so when exercising that right. In both cases, a PCT application was claiming priority from a US provisional application with multiple inventors, designated as applicants for the US only. However, for other states, including the EPO, a corporate entity was named as applicant.

The outcome of these cases could have a significant impact on how priority will be assessed before the EPO.

The  two questions read as follows:

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?

These questions are pending under referrals G1/22 and G2/22 and will be treated in consolidated proceedings.

The first and very broad question concerns the competence of the EPO to assess whether a party is the legitimate successor in title of the applicant for the first, i.e. the priority application. This issue has previously been raised in several Board of Appeal communications.

The second question is focussing more deeply on the specific facts which are also known as “PCT joint applicants approach” and questions if a valid priority can be claimed by a party, for instance the corporate entity not named in the first application but also named as applicant for the PCT application based on said first application filed in the name of the inventors as applicant. This is a situation most recognized in respect of US provisional applications filed before March 2013 (pre-AIA), but is still relevant as several of such cases are still under patent dispute.

While waiting for the outcome of the EBA referrals, the EPO has issued a Notice informing that all examination and opposition proceedings before the EPO  in which the decision depends entirely on the outcome of the referrals will be stayed until the EBA has issued its decision. This concerns all cases where Art. 87(1) EPC is relevant, so all cases where there is intervening prior art in case the priority would not be found valid. It also pertains to all cases where there is no evidence (beyond a possible PCT request) that the priority right was transferred from the applicant of the priority application to the applicant of the application in question before the filing date of said application.

As part of the procedure, third parties are also given the opportunity to file written statements to the EPO regarding their opinion and considerations in the G1/22 and G2/22 consolidated cases. The due date for so-called “amicus curiae briefs” is set on July 29, 2022.

The amicus briefs as they will be filed are visible here.

In the meantime, If you have any questions, we would be happy to help. Feel free to reach out via email on info@dcp-ip.com.

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