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EBA decides on the right to priority (G1/22 and G2/22)

20 October 2023

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued a decision on 10 October 2023 in consolidated cases G1/22 and G2/22, dealing with two questions relating to the right to priority:

  1. Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) EPC?
  2. If the EPO is competent, is a priority entitlement valid in a situation in which the inventors file a patent application in one country (e.g., US) and claim priority from that for a later international application (e.g., PCT) in which the inventors are named as applicants for some countries (e.g., US) but not for others (e.g., Europe)?

This co-applicant approach is commonly used for US-derived inventions.

Background to priority under the EPC

The EPC sets out the requirements for a valid claim to priority in Article 87(1) EPC:

  • “where” (the priority-founding application must be filed in a state party to the Paris convention and the WTO);
  • “what” (the priority-founding and priority-claiming applications must relate to the same invention);
  • “when” (the priority-claiming application must be filed no later than 12-months from the priority-founding application); and
  • “who” (the entitlement to claim priority belongs to the applicant of the priority founding application or their successor in title).

This case is specifically concerned with the “who” requirement.

Typically, the “who” requirement is met if the same applicant is used for the priority founding application as well as for the subsequent filings. For US-originating applications, it is common for the priority founding application to be filed in the names of the inventors and for the later application to filed in the name of an applicant company or, in the case of a PCT application, in the name of the inventors for the US and the applicant company for jurisdictions outside of the US. This can lead to the validity of the priority claim being called into question.

Challenges to priority

Prior to this decision, if the entitlement to priority were challenged before the EPO, then the successor in title (typically the applicant company) must provide proof of entitlement. This can be burdensome. For example, to resolve an objection under the “who” requirement, the applicant could demonstrate that the priority claiming application includes all of the applicants of the priority founding application (the so called “joint-applicants approach”), or provide an assignment of the entitlement to priority (assuming that it is dated appropriately). It is worth noting that the assignment may be implied in accordance with the relevant law of the parties involved, which if relied upon may be a particular burden to applicants (even when legally valid).

Summary of the decision

The EBA answered “yes” to both questions.

In the decision, the EBA ruled that the EPO was indeed competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. Their reasoning followed that this was necessary to make a meaningful assessment of patentability, for example, in the case of intervening publications or novelty only (i.e., so called, Article 54(3) EPC) prior art. The EBA also established that the applicant should be presumed entitled to the priority claim (assuming all other formal requirements are complied with, e.g., the “where”, “what”, “when” requirements). However, the EBA made it clear that this presumption can be rebutted by evidence that shows that the applicant of the priority claiming application did not acquire the right of priority (from the applicant, inventors, or their successors in title of the priority founding application) before filing the priority claiming PCT/European application. In other words, the answer to the second question can be framed as “yes, the applicant of the later application is entitled to the priority claim, unless evidence is provided to the contrary”.

Practice points

This decision does not change the standard required by an applicant to validly claim priority. It is always best practice to obtain or transfer the right of priority from the inventors, or their successors in title before filing a priority claiming patent application and to provide clear and consistent documentation on the identity and status of the applicants and inventors, for example using clear assignments. However, this decision does ease the burden on applicants. In particular, the initial presumption of validity limits the possibility of third parties, including opponents, to successfully challenge priority entitlement, as it shifts the burden of proof over to the third parties. This should result in fewer entitlement attacks during opposition proceedings. While not yet tested, it also seems likely that this applicant-friendly approach will be applied by the new Unitary Patent Court (UPC) in post grant proceedings.

If you have any questions about these latest developments or would like to discuss its potential impact on your filing strategies, please do get in touch with your usual Withers & Rogers contact.

Theo Worsley

Electronics, Computing & Physics group

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP October 2023