Assigned or not assigned? - the tricky issue of priority right transfer (T 0725/14)

A recent case from the EPO Boards of Appeal (BA) tackled again the thorny issue of transfer of the right to claim priority. The case (T 0725/14) is an interesting reversal of the norm in cases of invalid priority. We are used to situations in which the proprietor needs to show that an assignment had occurred before the filing date of an application claiming priority. In the present case, the Opponent faced a different but related challenge. In order to invalidate the priority claim, the Opponent had to demonstrate that an assignment had occurred prior to the filing date of the PCT.  T 0725/14 is thus yet another reminder to applicants of the critical importance of understanding the EPO's strict approach to the right to claim priority.

Legal background - The right to claim priority

The right to claim priority is provided by Article 87 EPC:
"Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, application for a patent,...or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application." 
A priority claim is only valid if the application is filed by the same person, or his successor in title, as the application from which priority is claimed. Consequently, if the applicant of the priority application and the application claiming priority are different, a legal transfer of the priority right must be demonstrable. The transfer must have occurred before the filing date of the application claiming priority.

Checking the agreement
The wording of Article 87 EPC has been picked over and disputed many times. The Broad's Institute's appeal in the European CRISPR case, for example, includes a lengthy treaty on the meaning of the term "any person" in English, French and German (IPKat post here).  The EPO's approach to priority was recently discussed at the Fordham IP Conference (IPKat post here). 

T 0725/14 focused on the phrase "an applicant...or his successor in title". Particularly, when can the right to claim priority be said to have been assigned by an applicant to his successor in title?

Assigned or not assigned?

The patent at issue in T 0725/14 was granted to the Dutch company, Furanix. The patent (EP2105439) was derived from the EP application EP 09165171.1, based on a PCT application. The PCT application was filed in the name of the Dutch chemical company, Avantium. The PCT application claimed priority from another EP application, also filed in the name of Avantium. The Opponent argued that the priority claim was invalid because Avantium had already transferred the priority application to Furanix when the PCT application was filed. The Opponent therefore argued that the priority claim was invalid.

The case rested on the appropriate interpretation of an agreement between Avantium and Furanix under Dutch law. The Opponent submitted the agreement between Avantium and Furanix in support of their case that an assignment had occurred. The agreement was dated prior to the PCT filing date. To complicate matters, the agreement was signed on behalf of both companies by their shared CEO, Mr van Aken. The agreement stated that Avantium declared to have assigned all rights in the priority application to Furanix. Furanix argued in response that the intention of the agreement was not to assign the right to claim priority from the application.

According to EPO case law, the transfer of a priority right has to be assessed by applying the relevant national law (T 0205/14). The Board (3.3.02) determined the relevant law in the present case to be the Dutch Civil Code.  The Board also took note of the "Haviltex principle" of Dutch contract law. The Haviltex principle dates back to a 1981 Dutch Supreme Court case. The Dutch Supreme Court ruled that the meaning of a written contract cannot be interpreted by mere pure linguistic analysis. Under the Haviltex principle, it is necessary to consider the meaning that both parties could have reasonably attributed to the contract.

Furanix argued that, applying the Haviltex principle, the right to claim priority could not have said to have been assigned by the agreement. Furnanix submitted a declaration by Mr van Aken that in signing the agreement, it had not been the intention of either Furanix or Avantium to assign the right to claim priority.

The BA did not find Mr van Aken's assertion credible. The BA particularly noted the absence of any written evidence in the form of internal communications or advice from the patent attorney. The BA found Mr van Aken assertions even less convincing given that Avantium invoked the right to claim priority only two weeks after the agreement. The BA concluded that the assignment was sufficient evidence to prove that the assignment had taken place. The priority claims was thus found invalid.

Why not just correct the name of the applicant?

The BA also rejected Furanix's auxiliary request for correction of the applicant name from Avantium to Furanix (Rule 139 EPC). Furanix argued that the correction should be allowable under the criteria for correction set out in G 1/12. The Enlarged Board of Appeal (EBA) stated in G 1/12 that a request for correction must only introduce what was "originally intended". Furanix's request was thus rejected in view of Furanix's arguments regarding the intention of Avantium. Namely, Furanix's arguments that Avantium did not intend to transfer the priority right, and thus intended to file the application claiming priority in the name of Avantium.

Furanix therefore found themselves in an unenviable position. On the one hand the intentions of Avantium to not assign the priority right to Furanix were not believed by the BA. On the other hand, the these intentions of Avantium were argued for sufficiently enough by Furanix to disqualify correction of the applicant from Avantium to Furanix.

A timely reminder, then, that the BAs show no signs of leniency in the matter of the strict identify requirements for a valid priority claim at the EPO.
Assigned or not assigned? - the tricky issue of priority right transfer (T 0725/14) Assigned or not assigned? - the tricky issue of priority right transfer (T 0725/14) Reviewed by Rose Hughes on Friday, May 03, 2019 Rating: 5


  1. There was an interesting argument during the hearing about the relevent law which should apply for substantive matters (eg interpretation of the document under the "Haviltex" principle, and the rules of evidence. Thus, both parties accepted that Dutch law should govern the interpretation of the assignment agreement. There was a dispute about how "Haviltex" should apply, but both parties took the view that Dutch law was determinative on whether/how Haviltex should apply, and filed evidence from Dutch attorneys. HOWEVER, the Opponent also argued that EVEN IF under Dutch law the intention of the parties was determinative, such intention needs to be properly evidenced, and the EPO rules for adducing and evaluation evidence should apply. Thus, when a tribunal applies foreign law, it nevertheless always uses its own rules of evidence to determine the facts so that it can apply the law. The EPO rules of evidence say that when all relevant information is under the control of one party (as was the case here) that party must prove its case "up to the hilt". That was the approach the Board seemed to follow, deciding in the end that the did not need to worry about the correct interpretation of Haviltex under Dutch law, on the basis that even if the Patentee was right on that legal point, it should still lose due to the lack of evidence to show the intentino of the parties.

    A really interesting case.

  2. You write that the Boards are showing no sign of "leniency" on priority. Leniency is not the right word.

    Let us distinguish between the Paris Convention notion of "same invention" and Paris's "successor in title". No leniency on "same invention" please. The Gold Standard is correct.

    Now, as to the "successor in title" issue, EPO insiders contend that it is the EPO's duty to police the issue with full rigor but that strikes me as misconceived and out of line with its attitude on ownership issues between Applicant and named inventor, in cases where there is no priority issue in play.

    The EPC has provisions to adjudicate cases of ownership disputes between two rivals for the status of owner. I do not see why the EPO cannot treat the "successor in title" priority issue consistently with all other non-priority ownership issues that have arisen over the last 40 years. It's a matter between the rival owners. Letting soup-stirring, mischief-making, cost-leveraging 3rd party Opponents make hay with the issue degrades the underlying principles of the EPC and, as the article suggests, imposes disproportionate penalties on deserving inventors and Applicants.

    Normally, I'm in favour of standards that foster more professional work by patent attorneys. The law should favour those who invest in top class patent drafting skills. But insisting that when ownership rights are transferred, and there is no dispute about ownership, every i be dotted and every t be crossed before filing PCT strikes me as excessively pernickety, anti-patent, unworldly, disproportionate and unreasonable.


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