The Enlarged Board of Appeal issued a decision on the consolidated referrals G 1/22 and G 2/22, ruling that the EPO is competent to assess entitlement to priority and that the “PCT joint applicants” approach is valid.
The first question referred to the Enlarged Board of Appeal concerned whether the EPC confers jurisdiction on the EPO to determine whether a party validly claims to be a successor in title.
The Enlarged Board of Appeal answered the question in the affirmative and further held that there is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority is entitled to do so.
Since the first question was answered positively, the Enlarged Board of Appeal also decided on the follow-up question. The second question concerned whether a co-applicant of a PCT application for states other than US, who is different from the inventors named as applicants for the US only in a US priority application, may validly claim the priority right in the European phase.
The Enlarged Board of Appeal also affirmed the second question and held that the rebuttable presumption also applies in situations like the above “PCT joint applicants” approach, where the European patent application derives from a PCT application and the priority applicants are not identical with the subsequent applicants.
The joint filing implies an agreement between the parties to rely on the priority unless there are substantial factual indications to the contrary. The Enlarged Board of Appeal further ruled that the EPO should adapt itself to the lowest standards under national laws and accept informal or tacit transfers of priority rights under almost any circumstances.
It is our opinion that there will be considerably less attacks on the formal entitlement to the priority in proceedings before the EPO. It appears that only in exceptional circumstances it may be possible to successfully challenge formal entitlement to the priority.
More details on the Enlarged Board of Appeal’s latest decision.