European Union: Questions On The Right To Claim Priority Referred To The EPO's Enlarged Board Of Appeal

The question of priority rights in Europe focuses on the applicant who was named on the priority application and the applicant who was named when the priority-claiming application (such as a PCT application) was filed. In Europe, it is all about the applicant, and - as the Broad Institute learned the hard way (see the so-called "CRISPR decision") - the consequences of getting this wrong can be catastrophic. The requirements for a valid priority claim are now under further scrutiny at the EPO, with two new questions having been referred to the Enlarged Board of Appeal in G 1/22 and G 2/22.

The First Question

The first question referred to the Enlarged Board asks whether the EPC confers 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. The alternative would be that national law, such as the law in the applicant's country, applies.

In the past, the Technical Boards of Appeal seem to have considered the answer to this question to be that the EPO does have jurisdiction, but this question has not previously been referred to the Enlarged Board of Appeal.

The Second Question

Since we can assume based on past EPO practice that the answer to the first question will be "yes", the Enlarged Board will move on to consider the second referred question concerning joint applicants.

For a priority claim to be valid at the EPO, all applicants from the priority application, or their successors in title, must be listed as applicants for the European application. It is accepted case law that the priority claim for a European patent is valid for all designated European Contracting States, providing all priority applicants (or their successors in title) are listed as applicants on the European application for at least one EPC Contracting State. This is often referred to as the "joint applicants approach".

The second question referred to the Enlarged Board asks whether a joint applicants approach should also apply to PCT applications. In each of the cases resulting in the pending appeals (T 1513/17 and T 2719/19), the applicants for the priority application are listed as applicants only for the US designation of the PCT application in question, whilst different applicants not entitled to claim priority are listed as applicants for all other designations, including the European phase. Therefore, the referrals ask whether the presence of the priority applicants on the PCT application for the US designation only results in a valid priority claim for all designations.

The Enlarged Board of Appeal has not yet set a date for oral proceedings, but these are expected to take place in 2023. We will continue to monitor the referrals and provide an update in due course.

For more information on priority, read our guide to priority in the UK here.

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