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New Referral to the EPO Enlarged Board of Appeal on the Entitlement to Priority

The Board of Appeal in consolidated cases T 1513/17 and T 2719/19 has referred two new questions to the Enlarged Board of Appeal on the issue of priority entitlement, in particular relating to the “joint applicants” approach to claiming priority.

The right to claim priority at the EPO is governed by Article 87(1) EPC, which assigns the right to claim priority from an earlier application to the person who filed the earlier application or their “successor in title”. This right to claim priority must be held at the filing date of the European patent or application at issue. This can be a trap for the unwary. For example, it is not uncommon for US priority applications to be filed in the name of the inventor(s). If a subsequent PCT application is filed in the name of a corporate entity, and the right to claim priority from the US priority application is not properly transferred to the corporate entity before the PCT filing date, the priority claim will not be valid in the European regional phase. Some high-profile European patents have been revoked following a loss of priority under such circumstances.

Perhaps in an attempt to address the harsh outcomes arising from this jurisprudence, several first instance tribunals at the EPO recently developed a “joint applicants” doctrine when assessing priority claims on European regional phase applications derived from PCT applications. These first instance tribunals held that if a PCT application is filed naming multiple parties as applicants, the right to claim priority should be upheld if any of the joint applicants hold the right to claim priority, even if the joint applicants are named as applicants for different PCT States (the most common situation being, of course, where the inventor is named as applicant for the USA, and a corporate entity named as applicant for all other states).

This “joint applicants” doctrine has now been considered by a Board of Appeal of the EPO for the first time, in the consolidated cases at issue here. In its written decision, Board suggests that is it sympathetic to the “joint applicants” doctrine. However, as this matter could potentially be determinative in the outcome of many pending and future proceedings before the EPO, the Board of Appeal has decided to seek a decision on the matter from the Enlarged Board of Appeal. The Board has thus referred two questions to the Enlarged Board. The first is broad in scope and asks whether the EPO even has the jurisdictional right to consider chain of title matters (i.e. should the EPO even be able to refuse a priority claim because the applicant cannot demonstrate that the right to claim priority had been properly transferred to it by the relevant date). The second question relates specifically to the “joint applicants” doctrine described above and seeks a ruling from the Enlarged Board as to whether or not that legal approach is valid.

The great benefit of a ruling from the Enlarged Board on this issue is that it will lead to effective harmonisation on this issue – not only will a ruling from the Enlarged Board be followed by all EPO tribunals, it is likely to be strongly persuasive before national courts in the EPC states also. We await the outcome with interest.