IP Review Summer 2018

13 To find out more contact Kirsty Simpson ksimpson@withersrogers.com The patent in question, EP2771468, was granted to the Broad Institute, MIT and Harvard University and was revoked after the filing of nine oppositions. This European application was filed naming Broad, MIT and Harvard University as Applicants and claimed priority from twelve US provisional applications, some of which named the inventors as Applicants. There were four US provisional applications at issue before the European Patent Office but we need only consider one by way of example. The earliest US provisional application named only inventors as applicants, as was traditional practice in the US. All but one of these inventors were employees of, and had assigned their rights to, Broad, MIT, or Harvard. Therefore, these inventors had assigned their right to claim priority. However, one inventor, Marraffini, was (and still is) a researcher at Rockefeller University. The European Patent Office considered that he was a joint Applicant, and he was therefore a joint holder of the right to claim priority from that application. Marraffini did not appear as an Applicant on the later European application, and no evidence was submitted to the proceedings that he had assigned his rights to The Broad Institute before the filing date of the European application. As a result, the European Patent Office held that the right to claim priority in respect of this provisional application had not been correctly assigned from the inventors named on the provisional application to the Applicants named on the European application. Therefore, the priority claim was considered invalid and the Applicants of the European application were not entitled to claim the filing date of the earliest US provisional application. Consequently, the claims of the patent were found to lack novelty over a number of documents which, as a result of the invalid priority claim, became relevant prior art, including the Applicant’s own disclosures. Accordingly, the European Patent Office revoked the patent. In view of recent case law of the European Patent Office, for example T0577/11, the decision was not a surprise to many. Furthermore, the UK courts reached the same conclusion in Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304. Following the decision, The Broad Institute immediately released a statement indicating that they intend to appeal the decision. It will therefore be some time before this story reaches its conclusion and the Appeal will be followed closely. In the meantime, there are some practical points to follow to ensure that the right to claim priority is not compromised: • Remember that the right to claim priority from an initial application is a separate and distinct right from ownership rights in any invention(s) that may be disclosed in the application and/or patent rights ultimately granted in respect of such invention(s). • All Applicants identified in an initial application must either be named on the later application, or have assigned their share of the right to claim priority to one or more of the Applicants named on the later application. • If there is to be any change to the Applicant(s) between the initial application and the later application, it is imperative that the right to claim priority be transferred, via a written legal document, prior to filing the later application. • If this is not possible, then it is advisable to name all the Applicants of the initial application (or applications, in the case of multiple priority claims) on the later application. It is always possible to transfer ownership of the application after filing. It is very important to make sure you have the proper priority chain of title in place at the appropriate time because it is not possible to retroactively correct any errors, as was shown the hard way in the recent CRISPR case. It is very important to make sure you have the proper priority chain of title in place at the appropriate time because it is not possible to retroactively correct any errors.