A lot of people have commented on the recently issued decision
in consolidated cases G 1/22 and G
2/22 from the Enlarged Board of Appeal of the European
Patent Office (EBA). As reported elsewhere, the answers to these
two questions:

1. 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?




2. If question 1 is answered to 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?

Given by the EBA are:

1. The European Patent Office is competent to assess whether a
   party is entitled to claim priority under Article 87(1)
   EPC.

There is a rebuttable presumption under the autonomous
law of the EPC that the applicant claiming priority in
accordance with Article 88(1) EPC and the corresponding
Implementing Regulations is entitled to claim priority.

1. The rebuttable presumption also applies in situations where
   the European patent application derives from a PCT application
   and/or where the priority applicant(s) are not identical with the
   subsequent applicant(s).

In a situation where a PCT application is jointly filed by
parties A and B, (i) designating party A for one or more designated
States and party B for one or more other designated States, and
(ii) claiming priority from an earlier patent application
designating party A as the applicant, the joint filing implies an
agreement between parties A and B allowing party B to rely on the
priority, unless there are substantial factual indications to the
contrary.

But what does it mean?

The background is that opponents at the EPO began ca. 2010
attacking priority for strictly formal reasons, stating that a
formal assignment of the right to claim priority was missing in
cases, where the EP application claiming priority and the priority
application had different applicants indicated, and that the patent
proprietor had the burden of proving that he indeed had the right
to claim the priority by being “successor in title” of
the priority applicant. The typical scenario is one where the
priority application is a US provisional application indicating the
inventor(s) as applicant(s), and wherein the subsequent PCT
application indicates their employer as applicant for the EP
designation.

In some cases, the consequence of such attacks, which are purely
speculative, was the revocation of the corresponding patent due to
prior art published during the period between the filing of the
priority application and the filing of the subsequent application
(so-called “intermediate prior art”). In those cases, the
Boards of Appeal found that the burden of proof, following normal
rules for apportioning the burden of proof, lay with the patent
proprietor for the entitlement to claim priority.

The situation was furthermore a bit messy because there was
divergence between decisions from the Boards of Appeal as to which
national law(s) should be used to make the assessment of whether a
transfer of the priority right had taken place before the filing of
the subsequent application. It was also not entirely clear what
constituted sufficient proof in the absence of a written
agreement.

We are therefore of the opinion that perhaps the strongest
statement in the EBA’s decision is given in point 110 of the
Reasons for the Decision:

The rebuttable presumption involves the reversal of the
burden of proof, i.e. the party challenging the subsequent
applicant’s entitlement to priority has to prove that this
entitlement is missing. If there is a strong presumption, the
hurdle for rebutting it is higher than in the case of a weak
presumption (see T 63/06, Reasons, point 3.2 for the rebuttal of
the presumption of sufficiency of disclosure). The presumption that
the subsequent applicant is entitled to the priority right is a
strong presumption under normal circumstances since the other
priority requirements (which establish the basis for the
presumption of priority entitlement) can usually only be fulfilled
with the consent and even cooperation of the priority applicant
(see above points 104 ff). The party challenging the entitlement to
priority can thus not just raise speculative doubts but must
demonstrate that specific facts support serious doubts about the
subsequent applicant’s entitlement to priority.

In other words, the EBA reversed the burden of proof
compared to the normal rules and, perhaps more importantly,
compared to some previous decisions from the Boards of Appeal. This
was based on the presumption that, under the prevailing, practical
circumstances for claiming priority, some measure of cooperation
from the priority right holder is needed. This is because priority
must be claimed before unrelated third parties have the
chance to learn of the priority application and its contents, and a
copy of the priority application must be filed.

In our opinion, the EBA merely apply common sense to what had
developed into a risk-free, speculative attack with a potential
enormous upside for opponents. And they do it with a firm
foundation in the EPC. The EBA did not rely on national law, only
the EPC, for arriving at their conclusions.

The EBA have therefore put patent proprietors’ minds at
ease, especially those patent proprietors who may not be as much on
top of their assignments as they should have been. We predict that
very few oppositions in the future, if any, will be decided based
on a lack of entitlement to priority, even though the presumption
in favour of the patent proprietor can in principle be rebutted
with suitable evidence.

An interesting follow-up question, in view of the recent
inauguration of the Unified Patent Court (UPC), is whether they
will follow the EBA. In view of Article 24 of the UPC Agreement, it
seems likely that the UPC should be in agreement with the EBA in
applying the EPC for the assessment of entitlement to priority
without also referring to national law.

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