As we reported in early 2022, the Enlarged Board of Appeal of the EPO are considering two pending referrals (G1/22 and G2/22) regarding the question of entitlement to priority. A hearing has now been set for 26 May 2023, and the Enlarged Board have now issued a preliminary opinion setting out the points to be discussed.
As a reminder, the referred questions are firstly, whether the EPO has jurisdiction to determine whether a party is entitled to claim priority as a successor in title of the original priority applicant; and if so, secondly whether a PCT application filed in the name of one party may validly claim priority from an earlier US application filed in the name of the inventor without a formal transfer of rights from the inventor, if the inventor is named in the PCT as an applicant for the US only. (The so-called “PCT joint applicants” approach).
In the preliminary opinion, the Board indicate that they are minded to interpret the first question broadly, as applying not only to purported transfers of the priority right to a successor, but also to the identity of applicants between priority and later applications (a particular issue where multiple parties are named in the priority application, but a narrower or broader set of parties are applicants for the later application).
No indication is given of the likely answer to that first question, with the Board noting that suggested answers “are about evenly divided between “yes” and “no” among the amicus curiae briefs” filed by third parties on the referral. However, they do note that Article 60(3) EPC – which states that an applicant “shall be deemed to be entitled” to obtain a European patent – may be considered relevant; with the reasoning that if the EPC itself does not address substantive issues of entitlement to an application, leaving that question to national courts, then it may be the case that the EPO should do the same with entitlement to claim priority. We might expect submissions to be made on the distinction between right to an application as such and right to claim priority.
By contrast, the opinion is clear that “the Enlarged Board tends towards a positive answer to question II”, and the written submissions also “almost unanimously” agreed. This would suggest that the likely outcome is that the Board will confirm that a PCT application jointly filed by multiple parties can validly claim priority from an application filed by only one or some of those parties. The Board suggest that the very act of jointly filing the PCT at least implies an agreement among the parties to share the right to claim priority.
If this is indeed the outcome, then it will be greatly reassuring to many patentees in a similar position.