"Should everyone else change, or just the Patentee?": Progress of the Broad's CRISPR appeal

A year ago, IPKat reported on the decision by the opposition division (OD) of the European Patent Office (EPO) to revoke the Broad Institute's EP patent for CRISPR/Cas-9 technology (IPKat post here). Given the undeniable commercial importance of CRISPR, the Broad appealed the OD decision (T0844/18).The Broad's Statement of Grounds of Appeal (and the Opponents' responses) are a thought-provoking read for anyone with an interest in the concept of priority in Europe.

For a full background of the case and the EPO's established approach to priority, see IPKat here. In brief, the OD decision for the CRISPR case was in line with the large body of EPO case law on priority. The case law states that the right to claim priority from an earlier application according to Article 87 EPC is afforded to the applicant of the earlier application and to no other party. The Broad's CRISPR EP patent (EP2771468) was based on a PCT filing (WO 2014204729) claiming priority from a number of US provisional applications. One of the US provisionals named an inventor-applicant who was not named on the PCT application. The EP patent was thus revoked in view of an invalid priority claim.

Another radical approach to priority

The 94 page appeal submissions from the Broad put forward three arguments in support of their right to claim priority from the US provisional. First, the Broad argued that the EPO should not be competent to assess entitlement to priority. Second, the Broad argued that Article 4 of the Paris Convention (corresponding to Article 87 EPC) should not be interpreted as meaning that all persons named on a first application must be named on the subsequent application claiming priority. Third, the Broad argued that the requirements of priority should be interpreted according to national law and US law in the case in question. 

(I) Entitlement to priority should not be assessed by the EPO

The Broad's first argument focused on the entitlement to claim priority as a property right. The Broad argued that the entitlement to priority is an ownership issue. The Broad further asserts that the EPO was never intended to have jurisdiction over such issues. The EPO does not, for example, have jurisdiction in determining entitlement to the patent or application itself. Entitlement is determined by the relevant national state (Article 60(3) EPC). In conclusion, the Broad argued, the EPO should not have the authority to revoke a patent in view of an assessment of priority entitlement.

The Broad further argued that "the same applicant" test used by the EPO to assess entitlement to priority, is an injustice in violation of Article 1 of Protocol No. 1 to the European Convention of human rights (Right to Property). The argument was that the right to priority, and thus the validity of a patent, is often lost because of a faulty transfer of ownership. An issue over transfer of a property right can therefore be used to destroy the actual property (the patent) itself. The same is not true in issues of entitlement, where the issue of title does not affect the existence of the patent. The Broad views this destruction of property as an injustice that was "certainly ...not the intention of the priority system set forth in the Paris Convention" (para. 78.).

(II) Interpretation of "Any Person" in Article 87 EPC and Article 4 Paris Convention 

The Broad argues that the term "any person" in Article 87 EPC and Article 4 Paris Convention means that any one person who duly filed the priority application can validly claim priority, in contrast to the "all applicants" approach normally taken by the OD. The Broad's argument focuses on interpretation of the term "any applicant" in Article 87 EPC. Does this really require all applicants of the first application to be named on the subsequent application claiming priority?

The Broad provided a lengthy discussion on this issue, starting with the appropriate interpretation of treaties as governed by the Vienna Convention of the Law of Treaties 1969. The initial discussion was followed by linguistic analysis of the ordinary meaning of the term "any person" in French, English and German. The Broad argued that all versions of the EPC provide for an open, permissive meaning of the term "any", namely "one or some indiscriminately". Lord Neuberger here entered the fray, providing in a declaration a summary of the statutory interpretation of the word "any" in a number of House of Lords decisions. Lord Neuberger concluded that "the natural meaning of Article 87(1) is such that one of a group of applicants for a patent is within the ambit of the Article" (para. 115.).

The Broad further argued that the EPO's interpretation of Article 87(1) EPC in the form of the "all applicants" test, conflicts with the object and purpose of the priority right. The Board again elaborated on why the "all applicant test" does not have grounding in the Paris Convention or the EPC, and is effectively an extra requirement for priority introduced by the EPO on their own initiative.

(III) National Law Governs who is "any person" as per Article 87(1) EPC

Finally, the Broad submitted the familiar argument that national law should govern priority entitlement, and particularly the identity of the "any person" specified in Article 87(1) EPC. National law may be used to assess whether an application has been duly filed, according to the requirement of Article 87(1) EPC. The Broad argued that similarly, "[t]he right to claim priority in a subsequent application is a right of the applicant. The status as applicant is necessarily linked to the country of origin, as this is where the priority right arises" (para. 222). US law does not require all of the applicants of a provisional to be named on a subsequent application claiming priority.

Response of the opponents

The reply of the opponents to the Broad's appeal are similarly lengthy. Below are some of the most salient points raised by the first opponent.

Opponent 1 argued in summary that the Broad repeatedly conflated the issue of examination of entitlement to an application with the different issue of who has the right to claim priority. The Opponent further notes that the Broad is demanding numerous changes to practice of not only the EPO but also the national courts, in disregard of a mountain of case law. The Opponent thus asks, "should everyone else change, or just the Patentee?"

Responding directly to the Broad's first argument, the Opponent argued the EPO should and does have competence to examine priority claims. The Opponent asserted that Broad's characterization of the EPO's competence as restricted to technical matters, as "a miserly mis-characterisation of the EPO's capabilities". The EPO must be competent to determine the valid priority date (and thus whether priority has been validly claimed), the opponent argued, in order that the EPO can correctly determine the state of the art and thereby the novelty and inventiveness of a claimed invention. The reference to Article 60(3) EPC (Entitlement) was dismissed as irrelevant by the Opponent.

The Opponent further argued that, contrary to the Broad's assertion, the loss of a priority claim does not result in the loss of an item of property (i.e. the patent), "because this argument pre-supposes that the Patentee owned the priority right in the first place - Patentee didn't!" (8.83). Additionally, the Opponent argued that a priority application for a patent does not fall under the scope of protection of Article 1 of Protocol No. 1 to the European Convention of human rights (Right to Property). Particularly, the Opponent argued, the priority application in question did not give rise to a legitimate expectation of obtaining an assert, as is required for protection by the protocol.

In response to the Broad's second argument, Opponent 1 submitted their own lengthy discussion of the correct interpretation of the word "any". The main thread of the Opponent's argument is that the term should not be interpreted in abstract or by reference to the decision of the English courts in relation to property rights. The Opponent favors the French interpretation of the relevant provision, arguing that the French text of the Paris Convention is the authentic text.

On the question of the applicability of national law to the question of the right to claim priority, Opponent 1 argued that is it is simply not necessary to look into the substantive national law of any one country, and to do so would be unworkable. One merely is required, the Opponent argued, to look at the designated applicant of the priority application.

The Broad has also argued for referral of the question of the right to claim priority to the Enlarged Board of Appeal, but will have to convince the board of appeal that that the referral is necessary in order to ensure uniform application of the law, or is a point of law of fundamental importance (Article 112(1) EPC).

Final thoughts

The above is a brief and far from complete summary of the arguments on both sides. Interested readers are encouraged to read the submissions by the other opponents, and the Broad's arguments in full. The Broad certainly faces an uphill battle in persuading the appeal board to disregard a considerable body of case law. The Opposition Division were of a clear view as regards to the merits (of lack of) of the Broad's arguments, given the EPO's well-established approach in such cases. Is the Board of Appeal likely to be persuaded? Oral proceedings has been set for 13 January 2020. As in the case of the Opposition hearing, a packed room of interested parties is expected.