The impact of G1/22 and G2/22 on formal priority attacks by Opponents

With their decision of October 10, 2023 (summarized in the accompanying Press Communiqué), the Enlarged Board of the EPO finally took the position that that for the EPO there is  “a rebuttable presumption” that an applicant is entitled to claim the priority that is invoked. While attacking the priority claim had become quite popular in opposition proceedings, the decision forecasted that this would substantially limit the possibility of third parties such as opponents to successfully challenge priority entitlements before the EPO. We have seen that the decision is already making a tangible impact on cases where formal priority is challenged in opposition.

One notable example of this is one of the early CRISPR patent families in the name of The Broad Institute, Massachusetts Institute of Technology (MIT) and President and Fellows of Harvard College. The first of these patents that was granted EP2771468 was revoked in November 2020 due to the earliest priority date being found invalid based on the arguments of the opponents that the right to claim priority had not been appropriately transferred to the applicants of the European application (decision T844/18). While for this case the technical board of appeal decided not to refer questions to the Enlarged Board of Appeal, proceedings for other patent family members were still pending, some of them facing the same or similar challenges on formal entitlement to priority in opposition. These cases were stayed pending the outcome of the referral. During oral proceedings in March of 2024, the reasoning of G1/22 and G2/22 was effectively applied to restore the formal priority entitlement to priority in  EP2784162 (T2360/19), EP2764103 (T2689/19), and EP2896697 (T2516/19).

At least two other technical board of appeal cases have been published in which the presumption of priority entitlement has not been considered rebutted by the opponents in light of G1/22 and G2/22 (T0521/18 and T2221/21). No cases have been published in which the opponents were able to rebut the presumption of entitlement to priority. It appears likely that Opposition proceedings will once again focus more on substantial arguments rather than on formal insufficiencies.   

Please do not hesitate to contact our team on info@dcp-ip.com to learn how the decision of the Enlarged Board of Appeal may be relevant to your activities and how we can be of assistance for you.