G1/22 and G2/22 – Preliminary opinion of the Enlarged Board of Appeal

On 21 March 2023 the Enlarged Board of Appeal (EBA) issued a preliminary opinion in consolidated cases G1/22 and G2/22 (“priority”), which provides some initial insight into the possible outcome of the referrals. Here, we provide a brief overview of the EBA’s communication.

The referral

In T 1513/17 the proprietor appealed the decision of the opposition division revoking European patent 1755674. The priority claimed by the applicant was deemed not valid. Due to the requirement to list the inventors as applicants in the USA at the time of filing, the applicants named in the priority application and the PCT application were different for the USA and other countries. No assignment from the inventors to the applicant was recorded prior to the PCT filing. The proprietor attempted to make a correction of an error during the opposition proceedings, adding the inventors as applicants in the granted EP patent. The correction was refused.

The proprietor appealed, arguing for a “PCT joint applicant approach”, namely that, in a PCT application where parties A and B are applicants for different designated states, both applicants may rely on the priority right derived from a priority application filed by only one of the applicants, without the need for any transfer of priority rights.

T 1513/17 is consolidated with referral T 2719/19 with similar facts.

The following questions were referred to the EBA by the Technical Board of Appeal:

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?

If questions 1) is answered in the affirmative:

II. 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?

Referred question I

Noting that the amicus curiae briefs on question 1 were split 50/50: yes/no, the EBA highlighted five questions which could be addressed during the upcoming oral proceedings, with no indication of their current position, namely:

1. Has the case law always been (implicitly or explicitly) supporting the EPO's competence to assess entitlement to priority? (It has been noted in an amicus curiae brief that objections based on the entitlement to priority became routine in opposition proceedings only from about 2010.)
2. Does Article 60(3) EPC have no impact on the interpretation of Article 87 (implying answering question 1 with "yes") or should the latter be understood in the light of the former (implying answering question 1 with "no")?
3. Should entitlement to priority be assessed ex officio in examination proceedings?
4. Could an assessment of entitlement to priority be made on the basis of the autonomous law of the EPC (i.e., without invoking national law)?
5. If the EPO has the competence to assess entitlement to priority rights, is it also competent to assess the entitlement to the priority application of the respective applicant? (From T 844/18 it can be understood that the entitlement of the party filing the priority application to do so and to acquire a priority right should not be assessed.)

In respect of question 2 above, Article 60(3) EPC deems - by way of legal fiction - that the person listed in the Request for Grant at the EPO is entitled to the patent, allowing prosecution to proceed without the procedural hurdle of verifying the substantive entitlement. Although unlikely in view of the current case law, should the EBA conclude that Article 87 is to be interpreted in light of Article 60(3) and that legal fiction should be used for entitlement to priority, this would represent a significant shift in current practice.

Referred question II

The EBA provided a more defined standpoint in their opinion on referred question II, where they tended to a positive answer, assuming the first question is answered in the affirmative. Whilst the EBA had reservations regarding the validity of the “PCT joint applicants approach”, they indicated that either a formal or informal agreement between the applicants on the sharing of the priority right could allow all applicants to be able to enjoy a priority right acquired by only one of the applicants.  Interestingly, the mere fact of a joint filing of a PCT application could, in the EBA’s preliminary opinion, serve as evidence for such an agreement.  If such an approach is taken in the final decision this may limit the detrimental consequences of not formally carrying out assignments on the right to claim priority in the above-mentioned scenarios at the EPO.

In any event, as the inventors are no longer required to be applicants under US law, it may be that we see fewer similar situations in the future.

The EBA hearing follows later this year.