The Enlarged Board of Appeal of the European Patent Office (EPO) has issued a landmark decision in cases G 1/22 and G 2/22:
First, the Enlarged Board of Appeal ruled that the EPO is competent to assess whether a party is entitled to priority. It may therefore be assumed that the EPO will continue to examine the validity of priority claims where relevant. Furthermore, the Enlarged Board of Appeal has confirmed that where a PCT application is filed by two parties claiming priority from an application filed by only one of those two parties, the joint filing of the PCT application implies an agreement between the parties to claim priority, even if different applicants are designated for different states.
Surprisingly, however, the Enlarged Board of Appeal also states in its decision that there is a “rebuttable presumption” of validity of a priority claim even if the applicant(s) of the European patent application are not identical to the applicant(s) of the priority application. This decision could make it more difficult for opponents to challenge priority claims in opposition proceedings before the EPO. However, this is welcome news for patentees, as the existence of a rebuttable presumption may facilitate the invocation of priority claims, even if the applicant of the European patent application is not the same as the applicant of the priority application.
In summary, this decision simplifies the priority claiming process and ensures that the responsibility for challenging priority claims lies with the opponents. It thus leads to a more uniform and efficient approach to priority rights in the EPO.
Below you can read the full answers of the Enlarged Board of Appeal to the questions submitted.
Answer to question 1
The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
Under the autonomous law of the EPC, there is a rebuttable presumption that the applicant claiming a priority under Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim the priority.
Answer to question 2
The rebuttable presumption also applies in cases where the European patent application is derived from a PCT application and/or where the priority applicant(s) is/are not identical to the subsequent applicant(s).
Where a PCT application is filed jointly by parties A and B, where (i) party A is designated for one or more designated states and party B is designated for one or more other designated states, and (ii) priority is claimed from an earlier patent application in which party A is designated as applicant, the joint filing implies an agreement between parties A and B allowing party B to claim priority, unless there is substantial factual evidence to the contrary.
This decision changes boundary conditions in the proceedings before the EPO. Due to our detailed knowledge, in particular of this current decision, we are in a position to represent the interests of our clients in the best possible way even under changing boundary conditions. In general, however, these valuation principles are only valid before the EPO. Different valuations may apply before other courts. Therefore, we still recommend completing the priority assignment before claiming priority.