ARTICLE
23 March 2023

Update Of G1/22 And G2/22

H
HLK

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HLK is a global cooperation combining Haseltine Lake Kempner LLP and HL Kempner Partnerschaft mbB and provides a full suite of IP services advising across the entire IPR Lifespan™ in all technical and scientific disciplines. With offices in London, Bristol, Munich, Leeds, Glasgow, and Guangzhou (China), HLK provides IP services across the globe. HLK’s resources and expertise are exclusively dedicated to IP protection: safeguarding the inventions, creative designs, brand identities and other innovations of its clients. HLK advises on the strategy, identification, protection, opposition and appeal, exploitation and enforcement of IP rights, and defends its clients from allegations of infringement by focusing on acquiring competitive advantage for its clients. HLK is privileged to work with some of the most exciting and forward-looking businesses in the world which are at the forefront of innovation and product development in their various spheres.
The Enlarged Board of Appeal has issued a preliminary and non-binding opinion for the referrals G1/22 and G2/22, which ask (1) whether the EPO has jurisdiction to determine whether a party validly claims priority as successor in title, and ...
United Kingdom Intellectual Property

The Enlarged Board of Appeal has issued a preliminary and non-binding opinion for the referrals G1/22 and G2/22, which ask (1) whether the EPO has jurisdiction to determine whether a party validly claims priority as successor in title, and (2) in particular for US-derived PCT applications where the applicant for the US is the inventor, the applicant for elsewhere is not the inventor, and the applicant for the priority application is the inventor.

The Enlarged Board has construed the first question broadly, to encompass all situations where the application claiming priority is not clearly identical with the applicant of the priority application.The preliminary opinion does not lean towards an answer on question 1 and instead highlights that there is no consensus amongst submissions received on this point: one side argues that the EPO has, can and should routinely assess priority; the other side argues that this is strictly a matter for civil law of national authorities, relating to ownership of intellectual property.

For the second question, the Enlarged Board indicates that it tends to support the "PCT joint applicants" approach, whereby the priority right of one applicant is enough for all other joint applicants, even when they are applicants for different PCT Contracting States. The Enlarged Board noted broad support for this pragmatic approach, but nevertheless has indicated that its reservations will require discussion.

The oral proceedings are scheduled for 26 May 2023 at 10:00 CET in Munich.

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