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EPO Enlarged Board of Appeal issues decision on formal priority entitlement

Precis: The long-awaited decision G 1/22 and G2/22 seems to be good news for applicants, especially for US applicants having European patents and patent applications in their portfolio that stem from a time pre-AIA. For opponents, however, it will from now presumably be more difficult to invalidate a priority claim.

On 10 October 2023, the EPO’s Enlarged Board of Appeal published its long-awaited decision concerning formal priority entitlement (G 1/22 and G2/22).

The decision is significant because the entitlement to priority can ultimately decide whether or not a claimed invention is novel or inventive and, thus, can decide about the life and death of a patent. The fact that an invalid priority claim can have severe consequences was experienced, for example, by the Broad Institute in 2020, which lost European patent
EP 2 771 468 largely due to an invalid priority claim (see T 844/18). Since then, there has been an increasing number of disputes about the validity of a claimed priority before the EPO.


In the cases underlying G 1/22 and G2/22, it was at dispute whether a European application (based on a PCT application) validly claims priority of a US provisional application. The priority application was filed in the name of three inventors. The PCT application names the three inventors as inventors and as applicants for the United States of America (US) only. For all designated States except the US, it names Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants. Prior to filing the PCT application, only one inventor has assigned the priority right; an assignment of the other two inventors had not taken place prior to the filing of the PCT application. In examination and opposition proceedings, the priority right was found to be invalid and, as a consequence, claim 1 was found to lack novelty.

When it comes to the formal entitlement to priority, it has long been disputed whether the EPO has the jurisdictional power to evaluate the same (see, e.g., T 239/16, T419/16, and T 845/19). In practice, however, the bodies of the EPO usually feel competent to evaluate the formal entitlement to priority and do so. When it comes to analyzing the formal entitlement to priority, the jurisprudence of the EPO has developed the so-called joint-applicant approach.

The appellant argued that this joint-applicant approach can also be applied to the underlying case, namely in the form of a so-called “PCT joint-applicants approach”.


The referred questions

By the interlocutory decision dated 28 January 2022 in consolidated proceedings T 1513/17 and T 2719/19, Technical Board of Appeal 3.3.04 referred the following questions of law to the Enlarged Board of Appeal for decision:

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 to 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 board’s response

The Enlarged Board of Appeal answered these questions as follows:

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.


What G 1/22 and G2/22 means for applicants and practitioners

For applicants, especially US applicants having European patents and patent applications in their portfolio that stem from a time pre-AIA, G 1/22 and G 2/22 appear to be good news as there is now a “rebuttable presumption” that the applicant claiming priority is entitled to do so, and entitlement to priority is now assumed unless there are substantial factual indications to the contrary.

On the other hand, it should from now on be more difficult for opponents to invalidate a priority claim.

It remains to be seen how the bodies of the EPO will handle the “rebuttable presumption” and what will be required to provide “substantial factual indications to the contrary” in order to shift the burden of demonstrating the validity of a claimed priority on the patentee. This is of particular interest, because it is usually the patentee who is in possession of all the relevant information regarding its entitlement to the claimed priority. Opponents, on the other hand, usually have to rely on publicly available information derived from patent registers.

Dr. Henning Lülf (Partner)