Priority Right Presumption at the EPO

The recent decision in the consolidated cases G1/22 and G2/22 before the Enlarged Board of Appeals effectively redefines the way transfer of the priority right under Article 87 EPC is regarded at the European Patent Office (“EPO”), which affects both patent applicants for and patent opponents to European Patent applications. For the patent applicants, this decision eases the burden of demonstrating the right to claim priority, while for the patent opponents, this raises the bar for challenging that priority claim during opposition proceeding. 

Particularly, the Enlarged Board held that:

1. The EPO is competent to make determinations as to entitlement to priority;
2. There is a rebuttable presumption that a party claiming priority is entitled to do so; and
3. The rebuttable presumption applies even where the priority stems from an application (e.g., PCT) with non-identical applicants.

Previous case law from the Boards of Appeal at the EPO required that a party or parties claiming priority to a previously filed application when filing a European Patent Application must prove that the right to claim such priority was explicitly obtained prior to the filing date of the European Patent Application or its equivalent PCT.  See e.g., T577/11 and T1201/14.  In other words, an express assignment of the priority right was generally required, that assignment having been executed prior to filing of the European Application or equivalent.

In the present decision, the Enlarged Boards of Appeal has dismissed the past requirement in favour of a rebuttable presumption of entitlement to priority for applicants even where the applicants are not identical to the applicant(s) of the claimed priority. 

In coming to this conclusion, the Enlarged Board found that, “in the absence of substantial factual indications to the contrary, the joint filing of the subsequent PCT application sufficiently proves that the parties entered into an implied or informal agreement allowing [reliance] on the priority right.”  G2/22 at 136.  Although the Enlarged Board noted that “an agreement cannot be implied if not all of a plurality of priority applicants are applicants or co-applicants for the subsequent application…, the rebuttable presumption of priority entitlement can [still] be applied.” The Enlarged Board reasoned that in such circumstances, the missing priority applicant may be in a position to claim title of the subsequent application, or at a minimum, rebut the presumption of priority entitlement with sufficient evidence.  G2/22 at 137.

This decision is welcome news for proprietors facing priority challenges whether from their opponents or the EPO, as it eases the burden of demonstrating the right to claim priority. The rebuttable presumption may be of particular help in cases originating in the United States or other jurisdictions where ownership may not initially vest in the Applicant absent an express assignment, such as in cases where the priority application was filed in the name of the inventors while the application claiming priority was filed in the name of their employer.

Look for a more detailed analysis of this case and practice tips coming soon.