2.2. Droit de priorité du demandeur ou de son ayant cause

Catchword:

1. For the question of whether the applicant is "successor in title" within the meaning of Article 87(1) EPC, it is sufficient for the applicant or patent proprietor to demonstrate that the assignment of the priority right was effective before the subsequent application was filed. The law does not set forth any other condition. In particular, the assignment need not be effective before the filing date of the subsequent application. (see point 2.3). 2. In the context of in-person oral proceedings, a request of a party for a hybrid format to allow the representatives to attend the hearing in person and other attendees to attend remotely should normally be granted only if the participation of the person for whom the access by means of videoconferencing technology has been requested is related to a person whose participation in the oral proceedings is relevant to the case, in particular to the decision to be taken at the oral proceedings (see point 1.).

Catchword:

I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority. II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary. 

Catchword:

I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority. II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary. 

Résumé

In T 2643/16 of 3 June 2024, the board had to decide whether the applicant was entitled to claim priority from previous applications D1 and D2 when filing the application on which the patent in suit was granted. This was a final decision following interlocutory decision T 2643/16 of 16 February 2023.

The board recalled that, in accordance with the order of G 1/22 and G 2/22, it was competent to assess whether a party was entitled to claim priority under Art. 87(1) EPC. In this context, there was a rebuttable presumption that the applicant claiming priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations was entitled to claim priority. This rebuttable presumption also applied in situations such as the one in hand, in which the European patent application derived from a PCT application and the priority applicants differed from the subsequent applicant.

According to the board, the opponents did not rebut the presumption that the applicant was entitled to claim the priority from applications D1 and D2. The applicant was therefore entitled to claim priority from such applications. Consequently, documents D6, D8 and D9 did not belong to the prior art under Art. 54(2) EPC and could not be considered for assessing inventive step of the claimed subject-matter of auxiliary request 1.

Résumé

In T 419/16 of 24 June 2024 the application on which the European patent was granted (the "application") was filed as a PCT application on 15 February 2005 (the "PCT application"). It named (i) parties A1, A2 and A3 as inventors and applicants for the United States of America (US) and (ii) corporation B1 as applicant for all other designated States. Party A4 was added under R. 92bis.1 PCT as applicant and inventor for the US. The PCT application claimed priority from a US provisional patent application filed on 17 February 2004 in the name of A1, A2 and A3, the inventors (the "priority application").

The board summarised the matters decided by it in its interlocutory decision T 419/16 of 3 February 2022. On novelty, it had noted that the disclosure in document D1, published after the priority date but before the filing date of the patent, would, in the absence of a valid priority, anticipate the subject-matter of claim 1 of auxiliary request 1. The board had decided that the subject-matter of claims 1 and 2 of auxiliary request 1 related to the same invention as disclosed in the previous application in the sense of Art. 87(1) EPC. The appellants had objected to the validity of the claimed priority querying whether a valid transfer of the right to claim priority from the priority application had taken place prior to the filing of the PCT application. Because the board's decision on this issue hinged on an answer to questions referred to the Enlarged Board of Appeal (the Enlarged Board) in consolidated cases G 1/22 and G 2/22, the board had decided to stay the proceedings until a decision was issued by the Enlarged Board.

The board recalled that in G 1/22 and G 2/22 the Enlarged Board had decided that entitlement to claim priority (and any related assignments of priority rights) should be assessed under the autonomous law of the EPC. Furthermore, the Enlarged Board had decided that there was a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations was entitled to claim priority.

According to the board, this presumption applied in the factual situation of the case at hand. Moreover, in the situation where the PCT application was jointly filed by parties A and B, (i) designating party A (here A1, A2 and A3) as inventors and applicants for the US only and party B (here B1) for all designated States except the US, and (ii) claiming priority from an earlier patent application (here the priority application) designating party A as the applicant, the joint filing implied an agreement between parties A and B, allowing party B to rely on the priority, unless there were substantial factual indications to the contrary.

Appellant-opponent 5 argued that contrary to the opposition division's finding in the decision under appeal, there had been no valid transfer of the priority right prior to the filing of the PCT application. Appellant-opponent 5 based this objection on the reason that the transfer had not been proven by the respondent in a formal way.

In the board's opinion, in view of the Enlarged Board's decision that the joint filing of the PCT application implies an agreement between parties A and B, allowing party B to rely on the priority, the aforementioned objection could not succeed because there was no requirement under the EPC that a transfer of the priority right be proven in a formal way. Furthermore, there were no substantial factual indications brought forward by the appellants that could lead to the conclusion that the joint filing of the PCT application did not imply an agreement between the applicants of the priority application and corporation B1 as the co-applicant of the subsequent PCT application (for all States other than the US). Thus, the presumption of entitlement to priority was not rebutted, and the priority claimed from the priority application as regards the subject-matter of claims 1 and 2 was valid.

Résumé

In T 2360/19 the patent was based on a European patent application which was a divisional application of an earlier European patent resulting from an international PCT application. This PCT application claimed priority from 12 US provisional applications (P1 to P12). The opposition division, applying the so-called "all applicants approach", had found that priority was not validly claimed from P1, P2, P5 and P11 because these had been filed by joint applicants (Party A1 or Party A2 being among them) and neither Party A1 nor Party A2 were named as applicants in the PCT application (and consequently in the patent in suit). This had led to a finding that the patent was not novel and to the revocation of the patent. The patent proprietors (appellants) had appealed the decision of the opposition division.

The board pointed out that there had been a dispute in the US (the inventorship dispute) regarding whether Party A1, an employee of Party A2, should also be named as one of the inventors in the PCT application (PCT/US2013/074819), and about the ownership of the patent. The inventorship dispute had been resolved in January 2018: an independent arbitrator had decided, inter alia, that neither Party A1 should be named as an inventor, nor Party A2 as a proprietor in the PCT application.

The board recalled that in G 1/22 and G 2/22 the Enlarged Board had found that "entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the applicant claims priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations…". This presumption was based on the concept of an implicit (implied, tacit or informal) agreement on the transfer of the priority right from the priority applicant to the subsequent applicant "under almost any circumstances". It, notably, allowed ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application. The Enlarged Board had noted, however, that "the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which the priority is claimed for the subsequent European application." Moreover, the Enlarged Board had found that a priority right and its transfer was a matter exclusively governed by the autonomous law of the EPC. Consequently, there was no room for the application of national laws on legal presumptions and their rebuttal.

The board further recalled that the presumption that the subsequent applicant was entitled to the priority right was a strong presumption, under "normal circumstances". It applied to any case in which the subsequent applicant was not identical with the priority applicant, and thus also to a plurality of co-applicants for the priority application regardless of the extent to which that group overlaps with the co-applicants for the subsequent application. This was the situation in the present case. Thus, the presumption of a validly claimed priority applied.

G 1/22 and G 2/22 further provided that the presumption can be rebutted to take into account "rare exceptional circumstances" where the subsequent applicant cannot justifiably rely on the priority. The rebuttable presumption thus involved the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority had to prove that this entitlement was missing. Just raising speculative doubts – even if these were "serious" – was not sufficient.

The board noted that the opponent's arguments were mainly based on documents concerning the resolution of the inventorship dispute, which said nothing about priority entitlement. From this, the opponents argued that these documents did not provide any basis for inferring the existence of an implicit transfer of the priority rights from Party A1/A2 to the appellants and, therefore, that the appellants had not provided evidence that they were entitled to the priority rights they claimed. According to the board, however, the presumption in G 1/22 and G 2/22 stated that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There was no evidence that rebutted the presumption in the present case. If at all, there was evidence supporting the presumption of an implied transfer agreement. The entire purpose of the inventorship dispute was to have Party A1 named as inventor, and Party A2 as proprietor, in the PCT application. In the absence of evidence to the contrary, it was not credible that Party A1 or Party A2 would have acted in any way to invalidate the priority claim of the patent.

The board found the priority claims to be valid and remitted the case to the opposition division for further prosecution.

Résumé

In T 2689/19 the European patent application on which the patent was based was a divisional application of an earlier European patent resulting from an international PCT application. This PCT application claimed priority from six US provisional applications (P1, P2, P5, P11, P13 and P14). The opposition division, applying the so-called "all applicants approach", had found that priority was not validly claimed from P1, P2, P5 and P11 because these had been filed by joint applicants (Party A1 or Party A2 being among them) and neither Party A1 nor Party A2 were named as applicants in the PCT application (and consequently in the patent in suit). This had led to a finding that the patent as granted lacked novelty and to its revocation. The patent proprietors appealed the opposition division's decision.

The board pointed out that there had been a dispute in the US (the inventorship dispute) regarding whether Party A1, an employee of Party A2, should also be named as one of the inventors in the PCT application (PCT/US2013/074743), and about the ownership of the patent. The inventorship dispute had been resolved in January 2018: an independent arbitrator had decided, inter alia, that neither Party A1 should be named as an inventor, nor Party A2 as a proprietor in the PCT application.

The board recalled that in G 1/22 and G 2/22 the Enlarged Board had found that "entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the applicant claims priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations…". This presumption was based on the concept of an implicit (implied, tacit or informal) agreement on the transfer of the priority right from the priority applicant to the subsequent applicant "under almost any circumstances". It, notably, allowed ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application. The Enlarged Board had noted, however, that "the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which the priority is claimed for the subsequent European application." Moreover, the Enlarged Board had found that a priority right and its transfer was a matter exclusively governed by the autonomous law of the EPC. Consequently, there was no room for the application of national laws on legal presumptions and their rebuttal.

The board further recalled that the presumption that the subsequent applicant was entitled to the priority right was a strong presumption, under "normal circumstances". It applied to any case in which the subsequent applicant was not identical with the priority applicant, and thus also to a plurality of co-applicants for the priority application regardless of the extent to which that group overlaps with the co-applicants for the subsequent application. This was the situation in the present case. Thus, the presumption of a validly claimed priority applied.

G 1/22 and G 2/22 further provided that the presumption can be rebutted to take into account "rare exceptional circumstances" where the subsequent applicant cannot justifiably rely on the priority. The rebuttable presumption thus involved the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority had to prove that this entitlement was missing. Just raising speculative doubts – even if these were "serious" – was not sufficient.

The board noted that the opponent's arguments were mainly based on documents concerning the resolution of the inventorship dispute, which said nothing about priority entitlement. From this, the opponents argued that these documents did not provide any basis for inferring the existence of an implicit transfer of the priority rights from Party A1/A2 to the appellants and, therefore, that the appellants had not provided evidence that they were entitled to the priority rights they claimed. According to the board, however, the presumption in G 1/22 and G 2/22 stated that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There was no evidence that rebutted the presumption in the present case. If at all, there was evidence supporting the presumption of an implied transfer agreement. The entire purpose of the inventorship dispute was to have Party A1 named as inventor, and Party A2 as proprietor, in the PCT application. In the absence of evidence to the contrary, it was not credible that Party A1 or Party A2 would have acted in any way to invalidate the priority claim of the patent.

The board found the priority claims to be valid and remitted the case to the opposition division for further prosecution.

Résumé

In T 2132/21 the patent claimed priority from a US application filed in the name of four inventors. In the filing of the PCT application leading to the patent, the four inventors were named as applicants for the US only and a corporation was named as applicant for all other states. The appellant (opponent) argued that the priority was not valid because there was no evidence that the priority rights had been transferred to the respondent (patent proprietor) before the PCT application was filed.

The board recalled that in G 1/22 and G 2/22 the Enlarged Board had stated that in a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary. This was the situation in the case in hand. Thus, the joint filing of the PCT application, in the absence of evidence to the contrary, was sufficient proof of an implied agreement on the joint use of the priority right.

The board concluded that, on formal grounds, the priority claim was valid.