A valid priority claim requires not only that claimed subject matter be fully disclosed in an earlier priority application (material priority entitlement) but also that the party claiming priority had the right to do so when exercising that right (formal priority entitlement). Recent years have seen a rise in the number of cases relating to the latter, and a corresponding rise in legal questions associated with assessing formal entitlement to priority. Briefly, Article 87(1) EPC provides a basis for formal priority entitlement if either the applicant entity on the earlier, priority-engendering application is identical to that on the later, priority-claiming application, or these applicants are not identical, but the later applicant is the successor in title of the former. As usual, the devil is in the details, and a separate article on our website provides more complete background information on some of these details (see here). Recent legal questions spring from such details and require clarification with increasing urgency. We now know that answers to at least some of these questions are on their way.

On January 28, 2022 an EPO Board of Appeal referred a number of questions relating to formal priority entitlement to the Enlarged Board of Appeal. The referrals are now pending as cases G1/22 and G2/22, which are based on appeal cases T2719/19 and T1513/17, consolidated as a single referring decision here. The case underlying the referral sometimes arises especially in older applications originating in the US in which the applicants on an initial US provisional application are natural persons (inventors) who do not appear, at all or completely, as applicants on the later PCT application claiming priority, or who do appear but without explicit territorial effect for the EPO. In such cases it can become important to be able to demonstrate timely assignment of the right to claim priority to the applicant(s) on the later PCT application. These issues again arose in the cases underlying the consolidated referral. The following table summarizes certain relevant facts underlying the new referral case.

Of particular importance for the question of formal priority entitlement here is the fact that neither of Organizations A and B, who were indicated as applicants on the PCT application with effect inter alia for the EPO, were among the applicants on the earlier US provisional application from which the PCT claimed priority. Also important is the lack of timely (i.e. before PCT filing date) assignments from each inventors/applicant on the US provisional to Organization A or, as the referring decision suggests, from any of them to Organization B. Based on these facts the board has now referred the following questions to the Enlarged Board of Appeal:

Question I is broad in its sweep, questioning as it does the power of the EPC to allow the EPO to assess valid succession in title at all. Certain comments in the referring decision suggest that this question was included simply to settle this question once and for all, as it has arisen in the past and will likely arise again in the future. The remaining Question II focuses more closely on the specific facts of the case underlying the referral, in which various applicants, including those listed as applicants on the original priority application, are applicants on the PCT application, but with heterogeneous territorial effect, a scenario the referring board refers to as the “PCT joint applicants approach” and sees worthy of submitting for higher instance clarification.

As the referral is quite new, such clarification will still be a while in coming, and when it does come it may not lay to rest all questions relevant for formal priority entitlement. Still, given the role that questions of formal priority entitlement are increasingly playing in important patent disputes in the EPO, even a partial clarification is a welcome step in the right direction. 

Author: Steven M. Zeman