Recent decision from the EPO smooths the way to obtaining patents in Europe

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The BIA’s Intellectual Property Advisory Committee (IPAC) helps BIA understand and shape the environment for IP ownership to ensure strong protection for BIA member companies. Our EU policy subcommittee has taken a look at what a recent European decision means for the right to claim priority to an earlier filed patent application. In this blog, Tom Leonard, Partner at Kilburn & Strode and member of BIA's IPAC sets out some of the details of the case and the practical implications for BIA members.

At the end of 2023, the European Patent Office (EPO)’s Enlarged Board of Appeal (EBA), whose rulings are relevant to anyone trying to obtain European patents, handed down its decision in the consolidated cases G 1/22 and G 2/22, setting out what seems to be a significant, and surprising, softening of the EPO’s approach to assessing entitlement to priority for European patent applications and patents.

The EBA ensures uniform application of the European Patent Convention (EPC), to which the UK is a signatory. Having a valid claim to priority may be crucial to ensure certain prior art is excluded from assessments of the validity of a patent or patent application. Many life science companies employ complex patent filing strategies that are often closely aligned with their data generation plans and R&D pipeline, as well as publication of their own results, for example in the form of press releases. Ensuring a priority claim is valid can mean the difference between a patent for a key asset being granted or refused.

What the EPO has decided

In the consolidated cases G1/22 and G2/22, the EBA has come to the (perhaps unsurprising) decision that the EPO is competent to assess whether a party is entitled to claim priority under Article 87(1) (“priority right”) of the EPC. What will be more surprising to many is that the EBA went further, and decided there is now a “rebuttable presumption” that the applicant claiming priority is entitled to do so. This means the EPO will now assume that entitlement to priority is valid, provided that the declaration of priority is made correctly under Article 88(1) (“claiming priority”) of the EPC and the corresponding Rules.

In practice, this reverses the burden of proof for priority entitlement. Instead of the applicant/patentee needing to provide evidence that the priority entitlement is valid, an opponent (or the EPO in pre-grant proceedings) must now provide “specific facts that support serious doubts” that the priority entitlement is not valid. According to the EBA, under the new standard, “the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing”.

This is a significant departure from previous EPO case law, where objections concerning the entitlement to claim priority were common and the burden was on the applicant/patentee to show that priority entitlement was valid (often requiring them to show that a valid transfer of the priority right had occurred under the relevant national law).

The EBA has also decided that transfer of priority rights should not be assessed under national law, but under the EPO’s autonomous law, which has no specific requirements for transfer of priority. As a consequence, the EPO should “adapt itself to the lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances” (see paragraph 99 of the decision).

The EBA goes so far as to suggest that execution of a suitable nunc pro tunc (“then for now”) assignment of the priority rights may provide a route to retroactively “fix” a priority claim.

The EBA has also confirmed that “implied agreements” can be relied upon to transfer priority rights. This is particularly relevant in a situation in which a priority application is filed by Party A and a PCT application is jointly filed by Parties A and B. The mutual filing of the PCT by A and B is deemed evidence of an “implicit agreement” allowing Party B to rely on the priority right established by Party A.

What does this mean?

This decision is good news for applicants and patentees. The risk of priority being found to be invalid based on lack of entitlement to claim priority will now be significantly lower due to the rebuttable presumption that the applicant is entitled to claim priority.

Many parties will perhaps not have expected the EPO to take such a pragmatic and decisive stance on this issue, but paragraph 101 of the decision highlights some of the motivations behind it. Harmonisation with national laws was key, as well as serving the underlying purpose of priority rights, namely “to facilitate international patent protection, by reducing the risk that the inventors’ (or their legal successors’) interest in obtaining patent protection in multiple jurisdictions is jeopardised by formal requirements they may inadvertently fail to meet.”

What should I do?

Applicants and patentees should assess any priority entitlement challenge they may be facing, to determine if this decision is of assistance and to consider the appropriate submissions to make in any pending oppositions and appeals.

If you are an opponent relying on a lack of formal entitlement to priority, it will be necessary to urgently review such cases and seek to strengthen it in other areas, since the priority attack is likely to be significantly weakened by this decision. If opponents wish to proceed with their priority attack, they will need to find and submit evidence that the applicant is not entitled to claim priority. In practice, this is likely to be difficult because assignment documents are usually under the control of the applicant, but the decision indicates that examples of parties acting in bad faith or disputes between the parties at the relevant date could also throw implied agreements into doubt. 

Regardless of the decision, issues with priority could still arise at national courts after grant during litigation, since this decision from the EPO is not legally binding on those courts. 

Thus, whilst this decision may give comfort to some applicants/proprietors, efforts should still be made to ensure that rights to claim priority are properly dealt with by assignment where necessary, before a subsequent application is filed claiming priority from a first case.  Members should also not rely on nunc pro tunc (“then for now”) assignments.

This advice note was adapted by IPAC member Tom Leonard from an article originally written by Jamie Atkins and Abi Heath of Kilburn & Strode LLP.


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