Changed priorities at the EPO

The issue of priority rights has for several years been a hot topic at the EPO, particularly in opposition proceedings (where a finding that a patentee is not entitled to claim a priority right may be catastrophic for their patent).

Now the EPO's Enlarged Board of Appeal have issued their Decision in combined cases G1/22 and G2/22 regarding the right to claim priority. We reported the preliminary opinion, noting that it seemed likely that - provided the EPO was competent to consider entitlement to priority - then the "joint applicants" approach was the correct one. That is, a PCT application jointly filed by multiple parties can validly claim priority from an application filed by only one or some of those parties.

The Decision confirms both that the EPO are competent to examine entitlement to priority; and that there is a rebuttable presumption that the applicant for the subsequent application is entitled to claim priority, provided the formal requirements are met.

So far, so simple.

However, a few interesting points jump out at me. 

One is that the EPO's competence to examine priority entitlement arises because priority rights are a standalone right (arising either under the EPC or the Paris Convention), and are not in any way linked to entitlement to the priority application itself, which would be governed by national laws. 

Two is that a transfer of priority right therefore need not meet the requirements imposed by national or EPC laws on transfer of patents (for example, the somewhat irksome rule that assignments of EP applications must be in writing and signed by both parties). The EBA express this by uncharacteristically noting that "The EPO should adapt itself to the lowest standards established under national laws" (Reasons, 99).

There is a suggestion that the second point may even allow for a change of the current practice that a transfer of priority rights must be concluded before the subsequent application is filed (another practice which has torpedoed many a patent application by loss of priority entitlement). "If there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights ... the EPO should not apply higher standards" (Reasons, 100).

Finally, the EBA's answer to the "joint applicants" question goes farther than simply confirming the original question asked regarding a PCT application filed with different applicants for different states. In fact, "the considerations leading to the presumption of priority entitlement apply to any case in which the subsequent applicant is not identical with the priority applicant ... It is also not relevant whether and to which extent the members of a plurality of co-applicants for the priority application overlap with the group of co-applicants for the subsequent application." (Reasons, 107; emphasis added). This potentially is a huge change in practice for the EPO.

Of course, the fact that the presumption is "rebuttable" means that patentees and opponents will still make the attempt to challenge priority on formal grounds, but this is likely to become more difficult in light of this Decision.