New referrals to the Enlarged Board on the EPO's joint applicants approach to priority (G 1/22 & G 2/22)

There have been two referrals (consolidated) to the Enlarged Board of Appeal (EBA) on the question of the EPO's joint application approach to priority for PCT(EP) applications (G 1/22 and G 2/22). A referral on the co/joint applicants approach to priority has long been expected (IPKat), and the new referrals will hopefully provide some much legal clarity on this issue. 

Legal Background: The EPO's joint applicant approach

Joint applicants

The EPO's joint applicants approach finds legal basis in Article 118 EPC, in view of its interpretation by the Board of Appeal in T 1933/12. Article 118 EPC states that, where the applicants for a European patent are not the same for different contracting states of the EPO, they shall be regarded as joint applicants and that unity of the application will thus not be affected. In T 1933/12 , the Board of Appeal found that Article 87 EPC does not prevent an applicant for a first application (P1) sharing their right to priority with a joint-applicant for a subsequent European patent application (P2).  Thus, an applicant may be named on a European patent application in cases where that applicant (or their successor in title) was not named as an applicant for the priority application, i.e. without an explicit assignment. Conversely, it is well established EPO case law that Article 87 EPC requires all applicants of the priority application (or their successors in title) to be named on the subsequent application claiming priority, as confirmed in the high profile Broad Institute CRISPR case T 844/18 (IPKat). In other words, when filing an EP application claiming priority, applicants (or their successors in title) may be added but not deleted relative to the application from which priority is claimed.  

Facts of the case: Applicability of the EPO joint applicants approach to PCT applications

The referrals in G1/22 and G 2/22 were announced by EPO Boards of Appeal press release earlier this week. The referrals stem from the interlocutory decisions of the Board of Appeal in cases T 1513/17 and T 2719/19, which are appeal cases from first instance decision on granted EP 1755674 and pending EP 1755674. The cases and the referrals are concerned with the fundamental question of whether the EPO joint applicants approach is applicable to PCT(EP) applications (in the form of an EPO "PCT joint applicants approach"), particularly in cases where the named applicants for a PCT application are different for different designated states. In cases such as these, the question becomes whether the different applicants of the PCT should be considered "joint applicants" according to the EPO's joint applicant approach.  

The cases cited in the referrals both stemmed from the PCT application WO 2005/110481 (P2). The PCT application claimed priority from the US provisional US 60/571444 (P1). P1 was filed in the name of 3 inventor-applicants, A1, A2 and A3. The PCT application (P2) named A1, A2 and A3 as inventors and applicants for the US designation of P2. A different applicant (A4) was named as the applicant for the EP designation, with A1-A3 listed as inventors. 

Crucially, the right to claim priority from P1 had only been assigned from A3 over to A4, and not A1 and A2, when P2 was filed. There is long-established EPO case law that the right to priority must be assigned from the applicant of a priority application to the applicant of a subsequent application claiming priority before the subsequent application is filed (again, as confirmed in the Broad Institute CRISPR case, IPKat). The patentee argued that the priority claim was nonetheless valid because A1 should be considered a joint applicant for the PCT application, given that A1 was listed as an applicant of the US designation. In effect, the patentee argued that a PCT joint applicants approach should apply. 

At Opposition, the granted patent was found invalid for lack of novelty and inventive step in view of an invalid priority claim. The OD particularly agreed with the Opponent that the priority claim for the PCT(EP) application was invalid because A4 was not the successor in title of the applicant A1 or A2 of the priority application (Article 87(1) EPC). The patentee's argument that a PCT joint applicants approach should be taken was thus rejected. 

Guidance needed from the EBA on the PCT joint applicants approach

IPKat will be back with further analysis of the legal justifications considered by the Board of Appeal for a PCT joint applicants approach. The legal considerations cover not only the correct interpretation of the EPC, PCT and Paris Convention, but also the potential impact of decisions from the national courts, including the Court of Appeal of the Hague and the Bundesgerichtshof (BGH). 

After considering the arguments for and against, the Board of Appeal opinioned that the joint applicants approach was not in fact applicable to the case in question, but also that guidance from the EBA was needed. The Board of Appeal particularly noted divergent practice on the PCT joint applicant approach and a number of cases in which the validity the PCT joint applicant approach had or was in dispute (T 2749/18, T 2842/18, T 1837/19 and T 845/19). The Board of Appeal concluded that the issue was a point of law of fundamental importance and thus deserving of a referral. Interestingly, the referred questions included a question on whether the EPO is even competent to determine questions of assignment of the right to priority, as the Board of Appeal also felt there was need for clarification on this issue:

I.  Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II.  If question I is answered in the affirmative: Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC in the case where:

1. a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States including regional European patent protection and
2. the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
3. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

Final thoughts

As has been recently demonstrated in the EBA's decision in G 1/21 (IPKat), the EBA is at liberty to find the referral inadmissible or to reword the referred questions as it feels appropriate. In contrast to other EBA referrals over the past years (this Kat is thinking here of the infamous G 3/19, IPKat), justification for the referral in this case seems relatively clear. What is less clear is how the EBA may approach the question, given the genuine legal confusion on this issue. 

The relevance of missing inventor/applicant assignments, and consequent reliance on a PCT joint applications approach, has diminished somewhat following the change US practise on the naming of inventors as applicants for provisional applications. Nonetheless, there are still plenty of opposed patents and pending applications for which legal clarification from the EBA on the PCT joint applicants approach will be welcome. 

Further reading

• Clarity is needed from the Boards of Appeal on the EPO's "co-applicant approach" to priority (28 Nov 2019)
• The IPKat EPO Enlarged Board of Appeal (EBA) Year in Review 2021 (28 Dec 2021)