IP Insights: Entitlement to priority - G1/22 and G2/22

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To dive even deeper into this issue, please read our corresponding IP report.

Hello everyone, today my colleague, Niels Malkomes and I will discuss the recent landmark decision of the EPO’s Enlarged Board of Appeal – G1/22 and G2/22 – on Entitlement to Priority. Niels, the practical significance of this decision for patentees and applicants alike cannot be overestimated. It will significantly reduce the risk that patents are revoked for formal reasons. Can you tell us a bit more about the decision?

The decision is about the priority and the entitlement to priority. The priority right is the right of an applicant to have a better effective date so he can file a later application claiming the priority date of an earlier application, i.e.the effective date for the assessment of novelty and inventive step will be the better, earlier date of the priority application. The question whether a patent is valid or invalid very often hinges on the validity of the priority claim.

And under the EPC, the right to claim the priority of an earlier application rests with the applicant of that earlier application or with their successor in title. The decision will make it more difficult to challenge that the applicant of the later application is indeed the true successor in title.

The most common scenario which will be most familiar to US applicants, especially before the America Invents Act, is the following: First, a US application is filed designating the inventor as applicant, and subsequently, an international application is filed that designates the inventor as applicant for the United States only, and the inventor’s employer, or another legal entity, for all other countries.

In this situation the formal validity of the priority claim of the European patent that resulted from the international patent application was often challenged. It was contested that the priority right was actually validly transferred from the inventor – the applicant of the earlier application – to the applicant of the later application. As an opponent, I would not have had to provide any further evidence to support that allegation. I could simply say “Well, it would be up to the proprietor to prove that the priority right was actually validly transferred.”

Therefore, ideally, the proprietor would produce a written assignment of the priority claim dating back prior to the filing of the later application. However, in many cases in the past, the proprietor was unable to provide such an assignment so that many patents got revoked because of the invalidity of the priority claim: The effective date of the application was no longer the date of the priority application but the date of the later application which means that prior art could surface which challenged the novelty or the inventive step of the invention.

With the present decision, the Enlarged Board of Appeal first addresses the question whether it is entitled at all to assess the validity of the priority claim – this is an important question because, for example, the entitlement to the application itself cannot be verified by the EPO, because this is subject to national law.

The Enlarged Board of Appeal decided that the entitlement to priority and the assignment of the application itself are two distinct issues, that the EPO is competent to assess the validity of the priority claim, and that said assessment is subject to the autonomous law of the EPO and not the national law.

They also said that when an applicant claims the priority of an earlier application, there is – and this is, I think, the most important aspect of the decision –a “rebuttable presumption” that this claim is valid. So, without any further conditions attached, this is assumed. And then, the burden of proof is basically shifted to the Opponent to prove that the priority claim is indeed invalid.