EPO Enlarged Board of Appeal Significantly Relaxes Formal Requirements for Making a Valid Priority Claim
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EPO Enlarged Board of Appeal Significantly Relaxes Formal Requirements for Making a Valid Priority Claim

The EPO’s Enlarged Board of Appeal has issued its much-anticipated decision in consolidated cases G 1/22 and G 2/22 on the issue of priority entitlement.

The background here is that it has become increasingly common for third parties to challenge European patents in opposition proceedings on the basis that the identity of the applicant is not identical to the applicant which filed the priority application, and no clear evidence is available to show that the right to priority was properly transferred before the filing date of the European patent. Some high-profile patents have been revoked by the Boards of Appeal of the EPO on this basis.

In an attempt to alleviate the harsh outcome arising from a strict requirement for a transfer of the right to claim priority under the circumstances outlined above, some first instance EPO tribunals made a finding that a PCT application filed in the name of joint applicants can validly claim priority from an earlier application filed in the name of just one of those applicants, even under circumstances where the PCT applicants were named for different PCT States.

A referral was then made to the Enlarged Board asking first whether the EPO even has jurisdiction to assess the validity of a transfer of the right to claim priority, and, if yes, on the validity of the “PCT joint applicants” approach outlined above.

The conclusions of the Enlarged Board are summarised below.

  • The EPO is indeed competent to assess whether a party is entitled to claim priority under Article 87(1) EPC, because the creation, existence and effects of the priority right are governed only by the EPC (reason 85).
  • Contrary to previous caselaw, it is not necessary for the EPO to apply national law when determining whether or not there has been a valid transfer of the right to claim priority. Rather, the EPO should apply the autonomous law of the EPC when making that assessment (reason 86).
  • The Enlarged Board held that, when the EPO assesses whether or not there has been a valid transfer of the right to claim priority, it should proceed on the basis that there is a strong rebuttable presumption that the priority applicant has transferred the right to claim priority, noting that such transfer need not be effected in writing, and can be done informally (headnote I, reasons 105-108 and reasons 99-100).
  • The rebuttable presumption can only be challenged by specific facts which support serious doubts about the transfer of the priority right (reason 110), which must relate to the situation at the date on which the priority right is claimed: later developments after priority is claimed cannot affect the rebuttable presumption (reason 109).

This decision is likely in practice to make it very difficult to attack the validity of a priority claim at the EPO on the basis that the right to claim priority was not properly transferred. It will therefore be welcome news to patent proprietors and applicants.