On 10 October 2023, the Enlarged Board of Appeal (EBA) handed down its decision on the consolidated cases G1/22 and G2/22. The decision is important for future assessment of priority before the EPO.
In summary, the EBA decided that (a) the EPO is competent to determine whether a party is entitled to priority and that (b) when a PCT application is jointly filed by two parties, wherein the priority application was filed by only one of the two parties, the joint filing implies an agreement between the two parties to rely on the priority.
In the decision, the EBA considered the following two questions.
Question I
Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
The EBA decided that the EPO has the jurisdiction to decide on whether a party is entitled to claim priority. This is because the EBA considered priority rights to be an autonomous right of the EPC.
From this decision, it is likely that the EPO will continue assessing the validity of priority claims.
Question II
If question I is answered in the affirmative:
Can a party B rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC, in the case where:
- a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protections and
- the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
- the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
If question I is answered in the affirmative:
Can a party B rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC, in the case where:
- a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protections and
- the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
- the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
The EBA decided that an applicant’s entitlement to priority is rebuttably presumed to exist if the formal requirements for claiming priority are fulfilled. The EBA stated that this decision reflects the fact that a priority applicant can be presumed to accept a subsequent applicant’s reliance on the priority right. However, the presumption should be rebuttable since in rare and exceptional cases, the priority applicant may have legitimate reasons not to allow the subsequent applicant to rely on the priority.
This rebuttable presumption applies in the situation referred to in question II. The EBA decided that the joint filing of the PCT patent application implies an agreement between the parties to rely on the priority, without the need for any formal transfer of priority rights.
From this decision, it is possible that there will be a reduction in the number of priority attacks during proceedings before the EPO.
