G1/22:Board of Appeal hands down decision on “entitlement to priority”

The Enlarged Board of Appeal has now published its long-awaited decision in referral cases G1/22 and G2/22 relating to the question of entitlement of priority. One of the involved parties was represented by Dr. Andrea Teschemacher and Dr. Carsten Prusko.

The Enlarged Board has been asked to decide on two important questions as to whether the EPO is competent to assess entitlement to priority and essentially whether the “PCT joint applicants” approach applies to a PCT application where different applicants are listed for different designated states.

In short, the conclusions of the Enlarged Board are that:

• Yes, the European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87 (1) EPC (headnote I); and
• Yes, where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority for an earlier patent application designated party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary (headnote II).

Accordingly with its answer under headnote I the Enlarged Board clearly strengthens the EPO’s position.

Further, with its answer under headnote II the Enlarged Board basically follows its preliminary opinion, where it leaned towards a positive answer. Noteworthy, instead of acknowledging the general applicability of the “PCT joint applicants” approach, the Enlarged Board considers the concept of an “implied agreement” more applicable while leading to the same result as the PCT joint applicants approach (point 121 of the decision). In this respect, the Enlarged Board also makes clear that the concept and conditions for an “implied agreement” equally apply to co-applicants directly filing a subsequent European application if at least one of the co-applicants was an applicant for the priority application (point 125 of the decision). Moreover, to put in question the implied agreement, evidence would be needed that an agreement on the use of the priority right has not been reached or is fundamentally flawed (point 126 of the decision).

Taken together, with its answers to the referred questions the Enlarged Board of Appeal has now provided clear guidance to and certainty for applicants and patent proprietors regarding the validity of the priority claim(s) in cases where the priority application was filed in the name of the inventor(s) as required under US law prior to the entry into force of the America Invents Act (AIA).