CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA?

Twitter was awash today with news that the Board of Appeal in the CRISPR appeal case had referred questions on priority to the Enlarged Board of Appeal (EBA). However, these reports proved premature. None-the-less, there seems no doubt that the Board of Appeal are leaning towards a referral. The European patent community is advised to adopt the brace position.

Today is the third day of the proceedings in the CRISPR appeal case (See IPKat's report on Day 1 for full background to the case: the Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage).

Image source: a Katfriend
In brief summary, the Broad Institute's CRISPR patent was revoked by the opposition division for lacking a valid priority claim under the well-established EPO approach to priority, based on mountains of Boards of Appeal case law. The Patentee's argument on appeal is that the EPO approach to priority is wrong because it is not in line with the Paris Convention or a proper interpretation of Article 87 EPC. There are three threads to the Patentee's argument: (I) Entitlement to priority should not be assessed by the EPO, (II) the EPO incorrectly interprets the phrase “any person” in Article 87 EPC and Article 4 Paris Convention, and (III) US law should govern the interpretation of “any person” in Article 87 EPC when the priority application is a US provisional.

In a dramatic development this morning, it seems that the Board of Appeal (3.3.08) were poised to seek clarification from the EBA on each of the three strands of the patentee's argument. The Board of Appeal indicated that the referral would be justified on the grounds that the points of law in question were of fundamental importance (Article 112 EPC). Thus, the Board of Appeal announced that it was their intention to refer questions on the issue of priority to the EBA. A break ensued to allow parties to consider their response. IP Magazine's twitter account reported that a referral had in fact been made. These reports turned out to be false [Merpel: Fake News!].

After the break, strong objections against a referral were raised by the Opponents. The Opponents argued that the questions should only be referred if the Board of Appeal believed the current EPO approach was incorrect. Particular, the referral could not even be contemplated unless the Board of Appeal intended to decide the case contrary to the established EPO case law on priority. As the Opponent's have pointed out, even a one off contradictory decision by a Board of Appeal does not necessarily justify a referral.

Following a heated debate, the Opponents succeeded in preventing a referral to the EBA today. The Board agreed that all three strands of the Patentee's arguments on priority should be discussed before a decision could be made on a referral. After lunch, discussion therefore moved on to the arguments concerning whether the EPO was competent to decide on the issue of entitlement to priority. The Board has also yet to consider the final strand of the argument, i.e. whether US law should govern priority entitlement in this case.

We are therefore holding our breath to see whether the Board will persist with their view that a referral to the EBA is necessary. 

Can a referral to the EBA be justified? 

The Board of Appeal has indicated that they would contemplate a referral on the ground that the issues at stake are of fundamental importance. The criteria for what constitutes an "issue of fundamental importance" was supplied by the EBA in G 1/12: "a point of law be regarded as of fundamental importance if its impact extends beyond the case in hand. Such importance is established if it could be relevant to a large number of similar cases". As Opponent 1 pointed out, the "large number" of cases to which the issue could be said to be relevant in this case, are all cases of the Patentee that claim priority from the same US provisional...

If there were to be a referral from the Board of Appeal, this would arguably not seem to be keeping with the norms of EPO legal practice. It is hard to argue that there is not uniform application of the law of priority across the Boards. It is also difficult to see how their can be said to be an issue of fundamental importance (except to the Patentee). To refer the issue to the EBA would be extraordinary. In this Kat's view, if the technology to which the patent relates wasn't so valuable, and if the case wasn't so high profile, it seems highly unlikely that a Board of Appeal would even contemplate a referral.

Stay tuned to IPKat for Day 4 as the hearing continues.

Day 1: The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage
CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA? CRISPR hearing days 2-3: Board of Appeal poised to refer to the EBA? Reviewed by Rose Hughes on Wednesday, January 15, 2020 Rating: 5


  1. A referral to the Enlarged Board of Appeal is misplaced to say the least. There are a plurality of reasons for this.

    There is a large body of case law according to which the transfer of the priority right has been assessed by the Board and the way the Opposition Division has used it is clearly following this case law. There is no divergent case law, hence no need to address the Enlarged Board.

    The interpretation by the proprietors of “any” person is biased to say the least. When looking at the raison d’être of the priority right, is to avoid self-collision, not to avoid prior art made public in the priority interval by the applicant himself, should its priority not be valid. This is exactly what happened here.

    “A” person having filed a first application in a member state of the Paris Convention, can file a further application claiming priority of the original application. If “a plurality of persons” have filed a first application, the priority right can only be exercised by the same plurality of persons in a subsequent filing. At least the rights of all the original applicants should have been transferred to the subsequent applicant.

    If it would be accepted that only part of the persons having filed a ´first application would be allowed to file a subsequent application, this would amount to a perversion of the priority right. One of the original applicants could simply decide to file a subsequent application with the other applicants being left to claim property of the subsequent application once filed.

    There is also a danger that the subsequent patent could be revoked at national level. Art 138 (1,e) provides that a patent can revoked if the proprietor of the European patent is not entitled. By not mentioning all the applicants in the original applicant in the priority application, the subsequent patent could thus be endangered. It is however correct that only an applicant having been squeezed out could request such a revocation.

    The problem at stake is only occurring due to some idiosyncrasies of US legislation with respect to provisional applications. If an exception would be made for US applicants as far priority is concerned, it would also derogate to the second pillar of the Paris Convention, i.e. that all applicants have to be treated on a par.

    If the ecxeption would be valid for US applicants, I see in it a further manifestation of extra-territoriality of US law. The rest of the world, especially Europe is suffering enough from the extensive application of US law abroad, which is actually merely used to get read of competition and nothing else. Enough is enough.

    It is to the USA to make their legislation in accordance with the general principles of priority which are existing long enough, and not to other patent offices to follow US legislation.

    The question at stake is certainly not a question of fundamental importance, as it boils down to act in favour of certain applicants stemming from the US. The case is important as a lot of money at stake, but this is not a criterion on which a referral should be based.

    If the Board would be referring a question to the Enlarged Board, one could also consider that the referring Board is chickening out from taking its responsibilities in view of existing case law. It would simply take into account the important financial impact of an adverse decision for the applicant’s money, but this is not an argument which should bother the Board.

    Should nevertheless a referral to the Enlarged Board occur, I hope that the latter would dismiss the referral as not admissible. Enough reasons have been given above here.

  2. The world is not so simple as expressed above. Let's say the priority applicaiton contained a rechargeable battery and a charger developed for that battery. These two aspects were developed by two companies and they file a joint application. It turns out that only the charger is novel so the company which developed the charger files an application on it own for the charger claiming priority. Should it be denied the right to priority simply because the EPO has interpreted "any" in a manner contrary to its normal meaning?

  3. I sympathise with the Board and think it true but a bit harsh, to characterize a reference as "chickening out". If ever there was a case deserving of analysis by the EBA, this is it.

    I disagree that the crux of the dilemma is special treatment for Americans. I see it, rather, as the burden which the EPO Boards of Appeal carry, to craft a body of law which the rest of the world is unable to disparage, which the RoW can accept as a template for development of its own national jurisprudence.

    For example, the existing "Gold Standard" at the EPO is, to my mind, more or less unassailable. But, on matters of ownership of rights, the EPO has less experience, less case law. Further, the way the EPC sets it up, the EPO is not tasked to be the final arbiter of ownership of rights. The EPC envisages this to be a job for the courts.

    Then there is the important universal issue of "proportionality". As Robin Jacob has said: who wants to be a patent attorney, when one moment of inattention to one formality or another can blow away for ever all possibility of any patent rights whatsoever. My view is that one should refrain from punishing excessively something in the nature of a simple oversight. Rather, one should strive to find a remedy that is proportionate and which balances the interests of the parties in dispute.

    Sometimes it takes an extreme set of circumstances to expose a defect in the intellectual foundation of the established case law. And once such a shift in perceptions has occurred, one can never again be satisfied with the established case law. So when a TBA is faced with such an extreme example, and inclined to find fault with the established case law, it should put aside any considerations of discourtesy towards esteemed colleagues. Rather, it should work out why the established law is wrong, and then write a Decision so well-reasoned that all those esteemed colleagues reading it with a mind willing to understand will grudgingly accept the force of the argumentation.

  4. I concur with MaxDrei, in particular, because

    1) the priority issues at stake ARE a point of law of fundamental importance,
    2) Art. 112(1)(a) EPC (in contrast to Art. 112(1)(b) EPC) does not require diverging case law,
    3) Art. 112(1)(a) EPC does not explicitly require that the questions is decisive for the acutal case (see German version: "hierzu" instead of "hierfür", i.e., the referral is to be required for a uniform application of the law or for answering a point of law of fundamental importance (and not for the actual proceedings),
    4) the external members of the EBoA have to be involved for anwering points of law of fundamental importance, because
    a) they are truly independent (e.g., their main income does not come from the EPO),
    b) they are less biased from an established (sometimes very questionable) practice of the EPO and/or case law of the BoA.

  5. Regarding "Any person", the EBA does of course have history of interpreting that as "NOT any person"!

  6. I concur with a referral. As the board itself comments in its preliminary opinion “the term ‘any person’ is ambiguous, rending a clarification necessary, even if there is no divergence in case law from the current interpretation of "any" as "same".

    We need clarification on this question as the current situation is, that where there are joint applicants on the priority application, a single applicant can block the other applicants' right to a European patent simply by publishing during the priority year and refusing to join on the subsequent European patent application.

    The present position of the EPO is understandable though. It is simple to deal with "same" rather than "any" but simple should not be sufficient legal reason.

  7. The concerns of Kant regarding joint applications claiming distinct embodiments are indeed relevant.

    However, good legal practices should rely on written statements made prior to the priority claim, and preferably as early as possible.

    Although the loss of potential patent right based on an incorrect priority claim can be a harsh statement, I don't think it is up to the EPO to repair such problems afterwards.

  8. Attentive Observer- Reply Part 1Thursday 16 January 2020 at 17:07:00 GMT

    It will not come as a surprise that I cannot agree with any of the subsequent comments made.

    Priority can only be acknowledged for the original applicant or its successor in title. This provision in Art 87(1) corresponds word for word to Art 4A of the Paris Convention. If there is a plurality of co-applicants only the successor in title of all the applicants can benefit from the priority.

    The interpretation given to the term “any person” is ignoring the fact that if there is a plurality of persons the successor in title has to be the one of all the persons having filed the original application. Saying that it indifferent if one or all applicants are applicants of the subsequent application is not respecting the meaning and purpose of the Paris Convention.

    The summary of the Paris convention given on the home page of WIPO states “This right means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time, apply for protection in any of the other Contracting States.” It seems then logic to me that in case of a plurality of applicants all those applicants may, within a certain period of time….. Anything else is legal gobbledygook.

    I have not seen one comment refuting this line of reasoning, what I call the correct way of looking at it, about the difference to be made between a single and a plurality of co-applicants for the first application. Self-collision, which is the prime consideration having led to the Paris Convention can only be avoided if all the co-applicants of the first application are also those of the subsequent application.

    The EPO is thus perfectly entitled to check whether the subsequent applicant is indeed the successor in title of the original co-applicants. This is different from the application of Art 60.

  9. Attentive Observer- Reply Part 2Thursday 16 January 2020 at 17:09:00 GMT

    It will not come as a surprise that I cannot agree with any of the subsequent comments made.

    If, in the case of the battery and the battery charger, one of the original co-applicants wants to file a subsequent application on its own, this is perfectly possible, provided the other co-applicant has transferred its rights to the co-applicant wanting to continue. This is an easily verifiable fact.

    Allowing one of the co-applicants to file a subsequent application without the knowledge of the other co-applicant is simply not abiding by the condition of the successor in title. How on Earth can the EPO know if the other co-applicant has agreed to the filing of the subsequent application by only one of the original applicants? A contract showing the transfer of rights from one of the co-applicants to the other one should be easy to provide. Anything else is fraudulent.

    The problem of US applicants having difficulty when it comes to claiming priority of a provisional application is not new. There have been a number of cases well before the problem now facing the Broad Institute. I can therefore not accept that all this happened by pure oversight. When there is a clear statement in the law, which however needs to differentiate between single applicants and a plurality of co-applicants, the notion of oversight appears misplaced.

    As far as the Friend of Art 122 is concerned I find his comments also highly misplaced, if not derogatory for the non-external members of the EBA. Claiming that external members of the EBA have to be involved for answering points of law of fundamental importance, because only they are truly independent means a contrario that the non-external members are not truly independent for the mere fact that they are paid by the EPO. I doubt that the external members of the EBA are acting for free when they are coming to sit in the EBA. And then they are also paid by the EPO. Why would they then be more independent that the non-external members?

    One should not forget, however in a totally different context, that the independence of members of the BA, and hence of the EBA, has been challenged before the German Constitutional Court. Raising the suspicion that members of the BA or the EBA are not independent is certainly not helping the cause of the BA resp. EBA before the German Constitutional Court.

  10. I would have welcomed a referral but I can live with a reaffirmation of the established case law too.

    Absolute strictness on "same person" is consistent with absolute strictness on "same invention" and the EPC's "absolute" strictness on what constitutes the state of the art (including "any other way" and excluding any reliance on a general grace period). The USA is unfamiliar with the strictures of First to File. For the sake of their clients, US patent attorneys should speedily educate themselves on its essentials (as I imagine they are already doing). It is not as if the EPO's strictness on Art 87 is automatically rendering the patent incurably invalid. Rather, all it's doing is declining to recognise Paris Convention priority. Those who publish before they file at the PTO are making a mistake. Those who publish (or otherwise shake things up) during the Paris year, before they file PCT, are also taking risks with their (or their client's) property.

  11. Dear Max Drei,

    With your last entry I find back the Max Drei I am knowing for many years.

    Talking about strictness, there is another point in which US applicants have not yet grasped the strictness of the EPO, and yet they should have realised for a while that what goes in the US does not work at the EPO.

    I am talking about Art 123(2). This provision is applied in a very strict manner at the EPO. No continuation or continuation in part. I have seen lots of US originating applications, in which the priority filing and even the subsequent contain barely more than a few general statements, but then they try to squeeze out things which were never even dreamt when filing in the US. Some even try to play with the structure of US claims, see T 1362/15.

    Dear Anonymous of Thursday, 16 January 2020 at 15:11:00 GMT

    It is correct that, “where there are joint applicants on the priority application, a single applicant can block the other applicants' right to a European patent simply by publishing during the priority year and refusing to join on the subsequent European patent application”. But is this really a problem for the EPO to solve? It is a problem of contractual relation between the two co-applicants.

    The EPO has the duty to check if an application claiming priority has been filed by the original co-applicants or by the successor in title, no more no less. Whether the two co-applicants cannot agree on the successor in title is irrelevant for the EPO. The role of the EPO is certainly not to act in case of problems between co-applicants.

    Even if there are no problems between co-applicants, but only one wants to continue, it is not the duty of the EPO to allow one to take precedence of the other. Kant’s or Gros Poisson’s comments are interesting, but they both want the EPO to play a role it is not even competent to play.

  12. Yes, Attentive, strictness on 123(2) I see as another aspect of the Gold Standard. Where I have a problem is the burden of proof. It is not fair to the inventor, and a denial of the award of a scope of protection commensurate with the contribution, to deny any prosecution amendment simply because Applicant has failed to prove, beyond any doubt at all, that the amendment adds no matter.

    But that is an area to which the Boards (if they are so minded) can give their attention, no?

    1. I have great sympathy for your point of view, but one should not forget that added-matter and novelty are the two faces of the same coin. You cannot have one and ignore the other. The whole case law of the BA is very coherent in this respect.

      Certainty for third parties is also of utmost importance and this is protected by the stance taken in the matter by the BA.

      There are no continuations or continuations in part in Europe. It is high time for US applicants (and other as well) to take care of the original filing. This would avoid a lot of problems afterwards.

    2. As you say, Attentive; two sides of the same coin. It is said that 30 years of every more skilful pleading by attorneys, that their claim is novel over the art, is what has produced the sometimes outrageous strictness with which 123(2) has come to be imposed. I plead for a more "real world" enforcement of the common "directly and unambiguously derivable" Gold Standard, equally, in BOTH novelty and added matter cases.

      And I agree with you on US-style drafting. The USA has only recently gone over to First to File. It does not yet grasp that FtF will ratchet up their requirements under domestic US law for the application as filed to contain an enabling "written description" of the claimed subject matter. For the time being, they have no idea what an "undisclosed intermediate generalisation" is. But with the emerging case law under FtF, they will "get it", gradually, over the next 40 years.


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.