G1/22 and G2/22 – Entitlement to claim priority
Two questions have been referred to the Enlarged Board of Appeal regarding the entitlement to priority of a Euro-PCT application where the PCT application was filed naming different applicants for different contracting states.
Background
Under European patent law, a requirement for validly claiming priority to an earlier application is that the applicant(s) of the priority claiming application must include the applicant(s) of the earlier application, or their successor(s) in title. For example, a priority claiming application having applicants X and Y can validly claim priority to an earlier application having applicant(s) X, Y, or X and Y. This is known at the European Patent Office (EPO) as the “joint applicants approach”.
It is possible to file a PCT application naming different applicants for different contracting states.
T 1513/17 and T 2719/19
In these appeals, the Board of Appeal considered a case where:
- a US application (“US1”) was first filed listing inventors A, B and C as applicants; and
- a PCT application was filed, claiming priority to US1, listing inventors A, B and C as applicants for the US, and listing parties D and E as applicants for all other designated states (including Europe).
In the decision under appeal, the EPO’s opposition division concluded that the applicants for the European application derived from the PCT application (“the Euro-PCT”) were D and E only. In other words, that the applicants for the Euro-PCT consisted only of those listed on the PCT application as applicants for Europe as a designated state. Further, according to the opposition division, the right to claim priority had been assigned from A to D before the PCT application was filed, but not from either of B or C to either of D or E. As such, it was deemed that priority had not validly been claimed to US1 – on the basis that the applicants for the Euro-PCT did not include B and C, or their successors in title.
During these appeals, the appellant argued that the applicants for the Euro-PCT should be considered to be A, B, C, D and E. That is, that the applicants for the Euro-PCT application should include all of the applicants listed on the PCT patent application, regardless of which designated states they were listed as applicant for. As such, under the EPO’s joint applicants approach, it should be decided that the Euro-PCT validly claimed priority to US1.
The Board of Appeal decided that it was not clear cut whether the appellant’s interpretation of the “joint applicants approach” is viable, and that the implications were sufficient to warrant a referral to the Enlarged Board of Appeal.
Referral
To paraphrase, the Board of Appeal referred the following two questions to the Enlarged Board of Appeal under G1/22 and G2/22:
- does the EPO have jurisdiction to determine whether a party validly claims to be a successor in title? (e.g. in this case, do the EPO have jurisdiction to decide that the right to claim priority had not been assigned from either of B or C to either of D or E); and
- if so, is the appellant’s interpretation of the “joint applicants approach” viable such that priority is validly claimed in the situation set out above?
The full wording of the referred questions can be found here. Watch this space for updates on the pending referrals!
