Priority entitlement: the EPO implements the new “rebuttable presumption” criteria of G 1/22 and G 2/22 (T 2360/19)

In recent Technical Board of Appeal decision T 2360/19, the Board considered the validity of priority claims following the Enlarged Board of Appeal consolidated decision G 1/22 and G 2/22.

The opposed patent EP2784162 in the name of The Broad Institute, Inc. relates to CRISPR gene editing technology and is a divisional of EP2771468. The parent patent EP2771468 was previously revoked as confirmed by the Board of Appeal decision in T 844/18 (discussed in our article here) following case law known as the “same applicant” or “all applicants approach”, which preceded G 1/22 and G 2/22. In accordance with the “same applicant” or “all applicants approach”, although an additional applicant can be added to the subsequent application, all applicants from the priority application (or their successor in title) must be named on the subsequent application.

In the present case, applying the new “rebuttable presumption” of G 1/22 and G 2/22, the Board found that the priority was validly claimed from all priority applications.

Background

• G 1/22 and G 2/22
  
  A European patent applicant is entitled to – and may claim – the priority of an earlier first application where the European patent applicant was the applicant who made the previous application or is their successor in title.
  
  Consolidated decision of the EPO Enlarged Board in G 1/22 and G 2/22 confirmed:

1. The transfer of the right of priority has to have been concluded before the filing of the subsequent application (Reasons §68).
2. The EPC does not set out any formal requirements for the transfer of the priority right (Reasons §86).
3. It is important to note that the transfer of the priority right is distinct from a possible transfer of the priority application and must be assessed under the EPC, regardless of any national laws. However, the Enlarged Board did note that “it is difficult to imagine a realistic scenario in which a party would transfer their rights to the invention but intentionally withhold the relevant priority right” (Reasons §102).
4. Where the previous application was filed by joint applicants, all of them must be among the later European patent application's applicants or have transferred their rights in the priority application to the later European patent application's applicant (see T 844/18).
   
   G 1/22 and G 2/22 refer to a “rebuttable presumption” under the EPC and, following G 1/22 and G 2/22, absent any substantiated indication to the contrary, there is a “rebuttable presumption” that an applicant or joint applicants claiming priority in accordance with Art. 88(1) EPC and Rule 52 EPC are also entitled to the claimed priority. The burden of proof is shifted, and the examining division, opponent or third party challenging an applicant's entitlement to priority has to prove that this entitlement is missing (Reasons §110). The rebuttable presumption of priority entitlement serves the purpose of legal certainty insofar as the applicant or patent proprietor as well as third parties can or should rely on the subsequent applicant’s entitlement to priority unless specific facts support serious doubts about such entitlement (Reasons §113).
   
   The Enlarged Board concluded that the presumed entitlement to priority should be rebuttable to take into account “rare exceptional cases” in which the claiming of the priority by the subsequent applicant appears to be unjustified e.g., related to bad faith behaviour on the side of the subsequent applicant or to the outcome of other proceedings such as litigation before national courts about the title to the subsequent application.

• T 2360/19
  
  In the present case, the patent claimed priority from 12 priority documents. Four of the priorities named L. Marraffini ("Marraffini") as an inventor. However, neither Marraffini, nor his successor in title, The Rockefeller University, was named on the international (PCT) application, and thus on the patent in suit. The omission was deliberate and an entitlement dispute in the US resulted in the finding by an independent arbitrator that neither Marraffini nor The Rockefeller University should be named as a proprietor of the PCT application, and consequently in the patent in suit.
  
  At first instance, the opposition division followed the “all applicants approach” (as also followed in previous Board of Appeal decision T 844/18 relating to the parent patent) and found that priority was not validly claimed from the four priority documents naming Marraffini as an inventor. As a result, the patent lacked novelty over the prior art.

The Appeal Board Decision

In its preliminary opinion, the Board noted that “G 1/22 established a presumption that a claim to priority was valid, by way of an implicit agreement on the transfer of the right to claim priority, which applied to any case where the subsequent applicant was not identical with the priority applicant. Such an implicit agreement should, according to G 1/22, be accepted under almost any circumstances, including ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application” (emphasis added).

In its decision, the Board particularly referred to reasons §107 and §134 of G 1/22 and G 2/22 in which “the Enlarged Board states that the presumption will apply to any case in which the subsequent applicant is 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” (emphasis added).

In its decision, the Board stated that in accordance with G 1/22 and G 2/22, rebuttal of the presumption “involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing. Just raising speculative doubts - even if these are "serious" as in the words of the Enlarged Board (see G 1/22, reasons 110, 113) - is not sufficient: to put into question the subsequent applicant's entitlement to priority, (full) evidence would be needed (see reasons 110, 126)” (emphasis added).

The Board found that there was “no evidence rebutting this presumption in the present case, rather there was evidence that supported the presumption” since the inventorship dispute had been settled. For clarification, the Board stated that “even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file”.

Therefore, the Board found the priority claims to be valid and remitted the case to the opposition division for further prosecution.

Commentary

This decision provides a clear example of the impact of the new “rebuttable presumption” of G 1/22 and G 2/22. Based on the same facts as assessed by the Board of appeal in T 844/19, the Board in the present decision arrived at the opposite conclusion.

Whilst the decision of G 1/22 and G 2/22 does not remove the burden on Patentees to ensure a valid chain of title to establish a valid priority claim, the EPO is largely shifting the responsibility for the assessment of priority entitlement to the national courts. This decision confirms that it should be “rare” and “exceptional” for validity of a priority claim to be brought into question at the EPO.

Finally, as the Enlarged Board emphasised in G 1/22 and G 2/22, reasons §114:

“there is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings”.

This salient point was quoted by the Board in T 2360/19, noting that priority entitlement may be decided in national proceedings but also outside the courts, by way of amicable settlement or arbitration (as is the case here) – “there is always a party who is entitled to claim priority”.