BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)

An interesting update in the progress of the CRISPR/Broad Institute appeal (T0844/18) has reached this Kat’s fluffy ears. As previously reported on IPKat, oral proceedings are scheduled for 13-17 January 2020. The Board of Appeal (BA), 3.3.08, has now issued a communication summarising the issues that will be discussed in the hearing. It seems that the 4.5 day hearing will be almost entirely devoted to consideration of whether the EPO’s long-standing approach to priority, particularly the “same applicant test”, should be altered. Many thanks to an anonymous Katfriend for sending the communication to IPKat.


T0844/18 is an appeal from the opposition division (OD) decision to revoke the Broad’s Institute’s CRISPR/Cas-9 patent, on the grounds of lack of novelty in view of an invalid priority claim (IPKat post here). The OD decision was in line with the large body of EPO case law on priority. The case law provides 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 (i.e the applicant(s) must be the same). The Broad's CRISPR European 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.

The importance of the case (and the significant commercial importance of CRISPR), is reflected by the Broad Institute’s ninety-four page grounds of appeal, with supporting declarations from such eminent persons as Lord Neuberger and Lord Hoffman (IPKat post here). Equally long responses have been submitted by the numerous opponents.

Preliminary thoughts from the Board of Appeal

From the Communication, it is clear that majority of the 4.5 day hearing will be taken up with discussion of the substantive issue of the validity of the Broad’s priority claim.  The issue in question is succinctly summarised by the BA:

"A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is the priority claim valid even without any assignment of priority right from B to A

The appellants say that the answer is ‘yes’ and the respondents that it is ‘no’". 

The BA then provides a preliminary view of some of the points of contention among the parties.

The BA first notes that current case law favours the opponents of the patent. Regarding the linguistic arguments relating the meaning of “any person” in Article 87 EPC, the BA “is of the view that the term ‘any person’ is ambiguous, rending attempts to elucidate the meaning of these provisions upon a purely linguistic basis difficult and most unlikely to succeed”.

A packed room is expected at oral proceedings
On the relevance of national law (as argued for by the Broad), the BA notes that the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that the issue may be resolved by the EPO without reference to national law. The BA also notes that it cannot find any merits in the references by the parties to national law as regards some aspects of real property. Perhaps unsurprisingly, the BA’s initial thoughts therefore do not appear to be favourable to the Broad.

The BA concludes that the outcome of the case will turn upon the pros and cons of altering the EPO’s practice on how the Article 87 EPC is interpreted. As neatly summarised by the BA, according to the Opponents, factors possibly speaking for maintaining the current EPO practice are: 
  •  “The practice is long standing.
  •  It may protect joint applicants against sharp practice by a sub-group of the joint applicants.
  • The situation of the patentees in the present case could have been avoided if they had shown sufficient foresight.
  • There is a risk of multiple subsequent applications.
  • There could be other possible negative consequences of changing this practice.”

The BA also summarises some factors possibly in favour of changing the present practice, as argued for by the Broad Institute: 
  •  “The joint applicant for the priority application who is not mentioned in the subsequent application would be in a better position: it would at least have the possibility of asserting its rights in any patent resulting from the priority application; the present practice means that loss of priority may be followed by loss of the patent.
  • The appellants’ approach is more in line with the aim of the Paris Convention, that of facilitating international patenting as it relaxes the required formalities whilst safe-guarding those elements necessary for recognising a priority right under Article 87(1) EPC

The BA concludes that “[i]t will probably be necessary to weigh up, amongst other considerations, the above factors in order to reach a decision”.

A large audience of interested parties is expected in Munich in early January. The hearing will be held in room 128 of the Isar Building.

Stay tuned to IPKat for further updates!

[Update: the communication has now been published on the register, here]
BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18) BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18) Reviewed by Rose Hughes on Wednesday, October 30, 2019 Rating: 5


  1. Looking forward to the appearance of the summarized TBA Communication on the EPO public file. Meanwhile, thanks to the IPKat for sharing this news that is "breaking" in more senses than one.

    Reading through the Board's summary of the pro's and con's of stepping back from the current established practice, two thoughts occur.

    First, getting more into line with "the intention" of the Paris Convention strikes me as outweighing most, if not all, other considerations.

    Second, can anybody here recall a case of many years ago, in which a UK patent attorney firm (U&L) was caught in the middle of an ownership dispute, between rival parties, that went to litigation during the Paris year. The facts of the case were quite mundane really. Such ownership disputes can arise quite easily. The two sides were giving that patent attorney firm (which had filed the priority application) opposite and irreconcilable PCT filing instructions. Thus it was, that U&L entered the litigation as an "interpleader". I should like to re-read any published case report in the context of the present dispute before the TBA. Can anybody supply the case report reference?

  2. So, the Board is of the view that "the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that the issue may be resolved by the EPO without reference to national law".

    I would have thought that it was, in fact, the Paris Convention that "provides a complete system for determining whether a priority right has been correctly claimed". If the EPC contains any different or additional requirements, then that surely means that the EPC Contracting States are contravening their obligations under the Paris Convention.

    1. Looking into the Board's communication reveals that the relevant paragraphs 27 and 28 are entitled "The EPC and the Paris Convention are a complete System". In fact the provisions of the EPC and the Paris Convention are identical as far as they are relevant for the contested legal issues in this case.

  3. The EPO is not to blame but the applicantThursday 31 October 2019 at 21:32:00 GMT

    The annex to the summons is published by now

    Anybody thinking that the EPC is a complete system and the Paris convention another and different complete system is playing with words and at the brink of bad faith.

    As the provisions of the Paris convention and of the EPC are identical as far as they are relevant for the contested legal issues in this case, it should lead to the conclusion that the long standing line of case law at the EPO should be kept.

    The question raised by the Board of Appeal is remarkable in its simplicity and the answer is obvious.

    If A and B are the original applicants of the priority application, in order to benefit of the priority, both have to be the applicants of the subsequent applications, unless one of the original applicants transfers his right of priority to the second one, or both transfer their right of priority to a third party. The only aspect which touches the EPO when determining who the successor in title is legal regime under which those transfer of rights have been validated.

    Disputing the ownership of an application once filed is different from deciding upon the right of priority, although in both cases the EPC speaks about the successor in title. When a first application is filed, or when an application claims priority and the applicant is the same as the one of the priority application, the EPO has no reasons to check whether the applicant in name is the true owner of the invention and hence of the application. The situation is different when an application is filed claiming a priority, and there is a difference in the name of the applicant of the priority application. Then the EPO has the duty to verify who the successor in title is.

    One should however not forget that the problem we are faced in the present case stems from the "oddities" of US patent law.

    Loss of the patent may only be the result of a document published in the priority interval becomes then prior art under Art 54(2), even if it is the own publication of all the applicants of the priority application.

    In the US we have a grace period which is unknown in the rest of the world. Should the publication of an invention before filing not be sanctioned in the rest of world just because the applicant has published his invention in the US?

    Translated into the priority system, it is in other words, what the appellants want.

    If the right to priority cannot be transferred before the end of the priority period, why should it not be possible that the subsequent application is filed by the holder of the priority right, and the ownership of the subsequent application is then transferred? This would avoid a whole series of problems, not just before the EPO.

    It might a priori look unfair that opponents can obtain revocation of a patent for, at a glance, reasons other than of substance, but here it is the applicant of the subsequent application which takes a great risk when the question of ownership of the priority right has not been properly cleared before the subsequent filing.

    1. Quite.

      A positive aspect of the arguably harsh consequence of mucking up entitlement to priority is that it has made (more) attorneys in the US sit up and take notice ... and to realise that they cannot always assume that what works just fine in the US might not be good for elsewhere.

      In other words, it seems to me to be a good thing that a consequence of this high-pofile case could well be that US attorneys will start to ensure that they have a better understanding of an international treaty that is of fundamental importance to intellectual property rights ... and to which the US is a signatory.

      Now if we could only find a way of getting patent examiners in the US to start looking at, and understanding the implications of, those pesky international treaties...

  4. Thanks for that last contribution, which reminds me of the very popular fob-off that, when you come to Europe with your patent applications, "Ignorance of the law is no excuse".

    It is said that you, dear Applicant, should have known that, unlike everywhere else in the world, here in Europe i) there is no grace period ii) under Art 54(3), your own earlier filings, unpublished at the date of your claim, nevertheless destroy the novelty of that claim and iii) you need to dot the i's and cross the t's, and memorialize post-filing ownership transfers BEFORE you file PCT.

    If the EPO is going to continue to impose its own EBA-made law on the rest of the world, even though this EBA-made law is said to be less than fully in line with "the aim" of the Paris Convention, the EBA really ought to try very hard this time, to come up with persuasive reasoning. Otherwise it is going to be criticised.

    There are good reasons for the absence of a grace period and very good reasons for the Art 54(3) self-collision. They persuade me. But as to the TBA question here, having read the Straus Amicus Brief, and now the Annexe to the TBA Communication, I personally am not seeing reasons persuasive enough to justify upholding current practice. Readers, in the enormous EPO file, which is the single doc I should read, that makes the most persuasive case for continuing with present practice? Perhaps that will persuade me.

    1. Max, it is not only Europe that provides potential pitfalls for those patent drafters that are ignorant of a foreign law. Does this mean that you are arguing for a WORLDWIDE lowering of those legal standards that might not be met by a "foreign" drafted and/or filed application and that could lead to a punishment that arguably does not match the (procedural) crime?

      And why stop there? It would be extremely unfair for the EPO to appy lower standards "foreign" drafted and/or filed patent applications ... so why not lower the standards also for those Europe-based applicants (and attorneys) who REALLY should know better.

      And another thing, what we are really talking about here is interpretation of the Paris Convention. Certain peculiarities of US law mean that those prosecuting only US applications do not ever need to think about the Paris Convention. However, whilst reference to the Paris Convention may not be required for a US-only patent practice, there really is no excuse for US applicants or attorneys who intend to file abroad to not familiarise themselves with the provisions of an international treaty upon which they will be relying (for the purposes of claiming priority).

  5. I agree with the philosophy of the EPO's present position that it must be established that both applicants have given consent for the priority right to be established for a convention filing. However I disagree with the strict conditions that this means assignments etc must be in place by convention filing. This is completely arbitrary, and does not recognise the time frame for business negotiations and transactions. As always the EPO is applying rules in a mathematical way that serves no greater purpose. More leniency and kindness please

  6. The EPO is not to blame but the applicantFriday 1 November 2019 at 21:11:00 GMT

    Dear Max Drei,

    The whole discussion turns about the interpretation given to the word "any" or in French “celui qui”. For some scholars, e.g. Prof. Strauss, it means not all of those having filed the provisional application, have to be named in the subsequent application.

    According to Prof. Strauss, if A and B have filed a provisional application, A could decide to file in certain countries, and B in others. I am anything but sure of that is what the drafter of the Paris Convention had in mind. By the way what the drafters of the Paris Convention had in mind is

    For other scholars, e.g. Prof. Forteau, the word “any” or in French “celui qui” should be interpreted broadly, encompassing one of several co-applicants of the original application acting individually when filing the subsequent application.

    Should we follow the views expressed in the name of the proprietor, we would be bang in the question raised by the Board.

    To me, “celui qui” has as plural “ceux qui”. This means clearly that in case of one original applicant it must be the same applicant or its successor in title of the subsequent application. If there is a plurality of co-applicants all those co-applicants have to be those filing the subsequent application. It is a question of mere logic.

    I am thus not convinced by Prof. Strauss’ statement or by the one of Prof. Forteau.

    After all, the purpose of the Paris Convention was to avoid self-collision, and the applicant of the subsequent application should not be penalised if its application was published before 12 months. Avoiding self-collision can only be between two applications having the same applicant or co-applicants. There again it is question of mere logic.

    Dear Suleman Ali,

    When the assignments are not ready and in place by the convention filing, why then not have the convention filing carried out by the original applicants and the transfer of ownership afterwards. This would obviate any problems of timing.

  7. Hi 'The EPO is not to blame but the applicant'

    If you file a patent application in the wrong name, and correct it later, by whatever means you don't lose the filing date.

    If at convention filing the relationship between the convention filing applicant(s) and the priority filing applicant(s) is not right it cannot be corrected afterwards and you lose priority. A very important patent for CRISPR may be lost due to this rule.

    There is no purpose for this strictness. It is just a rule that we have to follow. It is punitive in my opinion.

    1. Suleman,

      The question of whether it is possible to retroactively correct the applicants for an application claiming priority is completely different to the question of the standard that should be applied under the Paris Convention for assessing the entitlement of the applicant(s) to claim priority.

      Perhaps it would be reasonable in situations like this to permit retroactive correction. What would not be reasonable would be to ditch a perfectly sensible (and workable) line of case law in favour of a much less robust / workable standard.

  8. Suleman Ali makes a good point in his mail of today. See, "any person" can file a patent application (under Art 58, EPC) and then correct the ownership entity during prosecution. Can we derive from Art 58 that the framers of the EPC intended a degree of tolerance, a "grace period" if you will, after filing, to allow time to dot the i's and cross the t's on the formalities of ownership, always provided it is done prior to grant? Is this a further indicator and confirmation of the sense of the Paris Convention, to provide a fair degree of protection for genuine inventors, internationally, balanced against a reasonable level of legal certainty for everybody else, all over the world?

  9. The EPO is not to blame but the applicantTuesday 5 November 2019 at 19:04:00 GMT

    Dear Max Drei and dear Suleiman Ali,

    I would like to draw your attention to the fact that the authentic text of the Paris Convention is French.

    The English version is a mere translation, albeit an official one.

    Art 4 A in its authentic version states:
    1) « Celui qui » aura régulièrement fait le dépôt d’une demande de brevet d’invention….

    Art 4 A in its English version states
    1)“Any person” who has duly filed an application for a patent….

    To me the wording “any person” is not equivalent to “celui qui”.

    As I have said before, “celui qui” can have a plural which is then “ceux qui”. To me it is thus clear that if a plurality of co-applicants have filed a first application in a Paris Convention State have to be the co-applicants of the subsequent application claiming the priority of the first application, unless a transfer of rights has taken place to some of the original applicants or even to a third party to which the priority right has been assigned.

    For the sake of it, one might accept that in English “any person” becomes “any persons” in the plural. But the conclusion remains the same.

    Trying to hide under “any person” a group of persons which does not have to be constituted by the same group of persons when filing the subsequent application is thus quite daring and defies any logic. But this is what the proprietor tries to do.

    This has nothing to do with changing the ownership of an application. Even if a change of ownership would be requested as a correction under R 139, the EPO is entitled to verify whether the ownership has been correctly transferred.

    If the subsequent application is filed by the same group of persons having filed the priority application, a request for amendment under R 139 of the name of the applicants after filing, by deletion of the name of one of the original applicants or even by substitution in favour of a third party, the EPO would be perfectly entitled to verify whether the ownership of the priority has been correctly transferred.

    That the transfer of priority right has to occur before filing has another reason. Under EPC 2000, it is not possible to correct the information after publication of the application. Cf. R 52(2 to 4). A declaration of priority can only be corrected up to 4 months of the oldest priority, and if anticipated public publication has been requested from the moment of publication. The time constraint in matter of claiming priority is thus quite high, and it cannot be said that the conditions set by the EPO are unduly strict.

    I would thus conclude that the EPO is abiding by the Paris Convention and provides “a fair degree of protection for genuine inventors, internationally, balanced against a reasonable level of legal certainty for everybody else, all over the world”. But “any person” should not be left to the whim of the subsequent applicant.

    It is thus for US applicants to be more careful, and not for the EPO to change its practice to please US applicants.

    May be after the disaster of the Broad Institute, US applicants will be aware of the problems and act accordingly.

  10. Glad to see so much activity in this thread.

    On the question, what does "any person" mean, I note what the Rapporteur has already suggested.

    As to "lowering of standards for no good reason" again I suggest that formalities should be kept as simple as possible, but no simpler than necessary to balance the objectives of i) fair protection for Applicants and iii) reasonable legal certainty for everybody else. The lodestar "Simple as possible, but no more simple than that" is very long in the tooth but still reliable and trustworthy.

    Consider the strictness with which the EPO polices Art 123(2) EPC. Fully justified, in my view. That strictness keeps the case law clean and simple, and allows FTO drafters to express their opinions with a high level of confidence, to the benefit of industry, and it does this without depriving Applicants of any scope of protection. Whether the same level of strictness on the formalities of "successor in title" are required, before the end of the Paris year, is the matter for debate here. I am not yet convinced that any switch here, away from the established case law, would result in something "much less robust" or "much less workable". Some might indeed argue the opposite.

    But there you go! Let the debate continue. And let's try to keep out of "headless chicken" panic territory.

  11. The EPO is not to blame but the applicantWednesday 6 November 2019 at 09:55:00 GMT

    Following my preceding comment, I would like to draw your attention to decision
    T 924/15

    In this decision, a correction under R 139 of name of applicant in order to make the priority valid was not admitted. The Board also considered that G 1/12 was not applicable.

  12. Thank you Proof of the Pudding. I would disagree that the present case law is 'working'. It is only working in the sense of making it easy for the EPO to decide, by keeping the rules very black and white, and therefore strict. It is not working in terms of helping applicants get patents as way of benefiting the economic system. They are making costly mistakes, and no one is working to make the system easier.

    Thank you 'The EPO is not to blame but the applicant' for explaining the basis of the present system. However my point remains that it is 'punitive'. When a party makes a mistake it is their 'fault' and the system 'punishes' them. The EPO should not have that mindset, and should be changing the rules to make its systems easier to use. Priority goes wrong too often on important cases, and even if there is a feeling that the Americans need to learn our system, this should not affect how we act towards them.

    1. Suleman,

      As much as one might not wish it were so, the "punishment" cannot always fit the "crime". A good example would be an inescapable Art.123(2) / Art.123(3) trap. Very harsh, but necessary for the purposes of consistency of interpretation of provisions that serve an essential function.

      For the purposes of interpreting the relevant provisions of the Paris Convention, it is necessary to determine the intended function(s) of those provisions. The established case law (and the communication from the Board) sets out good reasons for believing that a "strict" interpretation of those provisions is necessary in order to ensure that they serve one of their essential functions, namely the prevention of abuse of the priority system.

      Personally, I believe that this function of the system is important enough to override the otherwise (seemingly) reasonable arguments against a less "strict" interpretation. But this may just be because I like to see coherency, consistency and workability in legal systems.

    2. Thanks Proof of the Pudding. I would just say that obtaining and successfully defending a patent must surely be primarily based on the nature of the scientific contribution that is made. It should not be primarily based on having an ability to navigate very complex procedures and requirements of the EPO. The EPO must surely be the number one patent office for rejection of patent applications for formal reasons (added matter, priority etc). It seems to have no way of self-diagnosing this, including at appeal and Enlarged Board level. In other jurisdictions a Supreme Court of some sort would act as a mitigating agent, but the EPO does not have that. It therefore has no means to stop itself getting stricter and for developing ever more complex legal tests, and so becomes more and more removed from the economic function of patents. Perhaps one day the EU will take it over and reconsider all this.

  13. The EPO is not to blame but the applicantWednesday 6 November 2019 at 21:41:00 GMT

    Dear Suleiman Ali,

    It will not come as a surprise if I disagree with your statement that the EPO refuses, not rejects, applications for formal reasons.

    Added subject-matter is anything but a formal reason. Added subject-matter and novelty are the two faces of the same coin. What one loses on the side of added subject-matter is gained on the side of novelty. You would certainly not claim that novelty is a formal reason.

    In this respect, the inescapable trap looks harsh, but forces applicants to check whether they want the patent the EPO proposes to grant, as they have to approve the text in which it was granted. It is thus too easy to claim afterwards that the consequences are too strict. Even if a representative can proudly announce to his client that he might obtain a patent, it is his duty to check whether it is in the form which does not bring harm in the future.

    Clarity is also not a formal reason, as it is moot to discuss about novelty and inventive step of a set of unclear features.

    I could continue the list. Deciding upon the validity of priority is neither a formal decision. If the priority is not valid, the state of the art to take into account when deciding upon novelty and inventive step changes drastically. Can this be purely a matter of form? I doubt it, even if at a glance it looks like it.

    As explained by Proof of the pudding the Boards of Appeal, and primarily the Enlarged Board of Appeal, have developed a coherent system of case law, which might look strict at a glance, but has the big advantage to allow everybody to know where they stay, especially third parties. What might be favourable to an applicant/proprietor goes to the detriment of third parties and vice versa. Again the two faces of a same coin.

    The only point where I would agree with you is the absence of a revision instance in the EPC. Boards of Appeal have a large discretion in their dealings, which will become even larger with the new rules of procedure as of 01.01.2020.

    The Boards of Appeal may rule whether or not the divisions of first instance have exercised their discretion correctly or not, but which instance rules whether the Boards of Appeal have exercised their discretion correctly?

    The institution in EPC 2000 of petitions for review is a rather complicated instrument, and the Enlarged Board has made clear from the outset that it does not want to deal, even roughly, with matters of substance. And yet when reading some petitions, a decision in the substance could sometimes be justified. When only 8 appeal procedures have been reopened after a petition for review, compared to 147 actual decisions, represent a quite meagre result.

  14. Hi 'The EPO is not to blame but the applicant'. Thank you for your response. I joined the patent profession in the mid-90s. I now spend a lot more of my time (and my client's money that could have been used for R&D) on added matter, lack of unity, priority, unsearched matter than I used to in the mid-90s. Everything has become stricter and more complex, and so costlier. The fact that we have a 'coherent body of law' is not worth the cost. I wonder how much it has cost organisations that carry out R&D to argue about priority in the CRISPR dispute.

    I am not disagreeing with what you say, and as an attorney I enjoy case law. But the real world costs of our legal games at the EPO are huge, and increasing. That money is coming out of R&D budgets. Someone needs to rebalance the system, or at least start to quantitate the real cost of having probably the strictest patent system in the world.

    Your response might be that this is not the EPO's responsibility. However it needs to be someone's, and the EPO is well placed to be a participant in such a discussion, in collaboration with EU policy makers.


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.