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Case law 31 Mar 2022

Validity of priority of joint applicants

Following first instance rulings in opposition and examination for a parent and divisional application claiming priority of the same US provisional application filed by three inventors, the Board assessed the validity of a priority claim when the priority claiming PCT application named the three inventors as applicants for the US only, but a corporate entity and a university as applicant for other states including the EPO but except the US.

Opposition appeal T1513/17 and examination appeal T2719/19 concern a patent and a second-generation divisional application respectively wherein the priority claim was held invalid by the Opposition Division [OD] and Examination Division [ED] respectively. At the hearing the board decided to deal with both appeal cases in consolidated proceedings pursuant to Article 10(2) RPBA. Both the applications derived from a PCT application that was claiming priority from a US provisional application filed by three inventors. The PCT application named the three inventors as applicants for the US only, but a corporate entity and a university as applicant for other states including the EPO, but except the US. Only one of the inventors appeared to have assigned their priority rights to the corporate applicant before the PCT was filed. In the first instance decisions under appeal, it was held that the priority claim was not valid because the right to claim priority had not been assigned by two of the applicant-inventors to the corporate entity.

The Appeal

In appeal, the appellant argued that, where the applicants for a PCT application were not the same for all designated states, they should nevertheless be regarded as so-called joint applicants. The appellant thereby made reference to the Guidelines for examination in the EPO, edition November 2016, A-III, 6.1 reading:

"However, in the case of joint applicants filing the later European patent application, it is sufficient if one of the applicants is the applicant or successor in title to the applicant of the previous application. There is no need for a special transfer of the priority right to the other applicant(s), since the later European application has been filed jointly. The same applies to the case where the previous application itself was filed by joint applicants, provided that all these applicants, or their successor(s) in title, are amongst the joint applicants of the later European patent application".

Joint applicants approach

On the basis thereof the appellant held that the “joint applicants approach”, which is applicable to European patent applications, should equally apply to PCT applications. The appellant’s reasoning is in particular based on the fact that a PCT application must have the same effects as an EP application and that in the case of an EP application different applicants from one State to another are considered as co-applicants (Article 11(3) PCT, Articles 118 and 153(2) EPC). The priority right-owning applicants thus introduced the priority right into the PCT application with full effect for that application as a whole.

In simplified form the "joint applicants approach" thus concerns the situation where a party A is applicant for the priority application and parties A and B are applicants for the subsequent application in which the priority right is invoked. Party B can now benefit from the priority right to which their co-applicant party A is entitled. A separate transfer of the priority right to party B is not needed.

PCT application

The appellant essentially argued that the joint applicants approach, which is applicable to European patent applications, should also apply to PCT patent applications. The Board referred to this as the “PCT joint applicants approach”. Following that approach, the priority claim should be considered valid because the three applicants of the priority application were among the applicants of the PCT application, irrespective of the fact that they were not applicants for the European patent designation.

A counter-argument to this was that on filing of the priority application none of the three inventors were applicants for the European patent designation, and therefore that they cannot be considered to be joint applicants for the European patent application at issue. The Board further referred to the approach taken by the Hague Tribunal in the case Biogen/Genentech v. Celltrion (Gerechtshof Den Haag 30 July 2019 , ECLI:NL:GHDHA:2019:1962). The applicable law is that of the place where protection is sought (lex loci protectionis), i.e. the EPC, which does not prescribe particular formalities as regards the assignment of the right of priority. In that case, the very filing of the PCT could be evidence that the right of priority had been implicitly assigned for the other countries, since A had consented to B being an applicant for those countries.


Decision of the Board of Appeal

The Board of the present cases recognized several appeal cases in which the PCT joint applicants approach is (or has been) a disputed concept. The board refers for example to communications issued by the boards in cases T 2749/18, T 2842/18, T 1837/19 and T 845/19. The Board came to the view that the applicability of the PCT joint applicants approach is of fundamental importance as several other appeal cases identify this as a disputed concept.

The following questions have been referred to the Enlarged Board of Appeal by the Board involved in the interlocutory decisions in both T1513/17 and T2719/19, the referrals are currently pending under G1/22 and G2/22:

  • 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?
  • II. If question I is answered in the affirmative:

Can a party B validly 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

  1. 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 protection and
  2. the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
  3. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

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