EPO Approach to Priority Entitlement Clarified by Board of Appeal in Case T0844/18

In a press communiqué dated 6 November 2020 the Technical Board of Appeal of the European Patent Office (EPO) issued its written decision revoking European patent number EP2771468 owned by the Broad Institute, Inc. and others. The patent claimed a fundamental aspect of the CRISPR/Cas9 gene editing technology platform.

The patent was initially opposed by nine opponents during first instance proceedings. The Opposition Division revoked the patent on the ground of lack of novelty following a loss of priority date. The opponents had argued that the Broad Institute, Inc., together with co-applicants Massachusetts Institute of Technology and President and Fellows of Harvard College, were not legally entitled to claim priority from certain priority applications. If so, the claims would lack novelty since the invention had been published in the scientific literature shortly after the second priority date. The Opposition Division agreed with the opponents and the patent was revoked. The patentees appealed.

There has been significant interest in the case. In defence of the priority claim the patentees challenged fundamental principles underpinning the EPO's approach to the assessment of legal entitlement to priority, including whether the EPO has competence to consider the matter at all.

At the oral proceedings held in January 2020 the Technical Board of Appeal heard arguments from the parties, including whether the issues raised warranted a referral to the EPO's Enlarged Board of Appeal. Having refused a referral, the Board rejected all arguments advanced by the patentees. The appeal was therefore dismissed and the patent was revoked.

The Board of Appeal's decision provides clarification on key aspects of the EPO's approach to assessing legal entitlement to priority. The Board decided that EPO instances are empowered and obliged to assess the validity of a priority claim. The Board maintained the long-established "all applicants approach" which requires that all applicants who filed an earlier priority application jointly, or their successors in title, must be constituted in the group of applicants filing the later priority-claiming European patent application. In addition, the Board decided that the question of who is an applicant is to be determined by the European Patent Convention and the Paris Convention, rather than by national law. The decision therefore affirms the EPO's existing case law and practice.

You can read our detailed review of the case in this briefing.