A significant shift in the assessment of the validity of priority claims has been confirmed by the EPO’s Enlarged Board of Appeal (EBoA) in the handing down of its combined decision for G1/22 and G2/22. In addition to confirming the competency of the EPO to assess the validity of Paris Convention priority claims, the new decision lessens the restrictions on the right to claim priority in European applications stemming from PCT applications which have been filed with different applicants or groups of applicants listed for different designated states, and which claim priority to an earlier application identifying only one of these applicants or groups of applicants.
The EBoA’s decision is strongly pro-patentee/pro-applicant, and provides much needed reassurance to applicants of European patents having unorthodox priority claims as a result of variation in the applicants of priority and PCT applications. For example, a PCT application filed in the name of joint applicants is deemed to validly claim priority from a priority application that was filed in the name of only one of those applicants (including when the PCT applicants are not the same for all PCT states). The decision will make it more challenging to attack the validity of a priority claim at the EPO on the basis that the right to claim priority was not properly transferred.
The EPO will assume that there is agreement between joint applicants of PCT applications such that, the parties can rely on an implicit assignment of the right to claim priority. Third-parties seeking to challenge the validity of priority claims on an entitlement basis will now need to “demonstrate that specific facts support doubts about the subsequent applicant’s entitlement to priority”, and “not just raise speculative doubts”.
This pragmatic approach made by the EBoA seeks to ensure that the EPO does not create a higher formal bar to securing a patent than would otherwise be established under national laws, and it takes note that in some jurisdictions the right to obtain a patent may be transferred without any written agreement or other formalities, such as from an employee inventor to their employer (such as in the UK). The EPO has therefore sought to position itself as applying the “lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances.”
As a further boost to rights holders, the EBoA suggests that if there are jurisdictions that allow an ex post facto (“nunc pro tunc”) transfer of priority, the EPO should not apply higher standards, which potentially opens the door for retroactive transfers of priority rights. We would, however, recommend that any assignment of the right to claim priority is executed before a PCT application is filed, not least in view of the potential for national courts to take a diverging approach given that they are not bound by the decision of the EBoA. Indeed, UK courts have adopted a less generous approach to assessing priority entitlement of applicants, and it will be interesting to see if the EBoA’s decision influences decisions that are handed down from national courts in years to come.
While providing a welcome boost to applicants and patentees, third-party opponents with on-going oppositions and appeals which rely on a lack of clear entitlement to a priority claim should take immediate action to consider the impact of these decisions on their overall strategy, since the onus will now be on the opposing party to provide evidence of substantial factual indications that an agreement on the use of priority rights was not implied.
If you require any advice on how these decisions may affect you and your IP strategy, please contact your WP Thompson representative in the usual manner, or alternatively, please contact us at london@wpt.co.uk.