G1/22 and G2/22: Enlarged Board of Appeal decision on priority entitlement

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Adamson Jones & Symbiosis IP

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The Enlarged Board of Appeal takes a significant departure from recent case law with its decision in consolidated cases G 1/22 and G 2/22 regarding priority entitlement.


Questions were referred from consolidated cases T 1513/17 and T 2719/19 by the Technical Board of Appeal.

In the two cases underlying the referral, the priority claim was found to be invalid by the Opposition Division and the Examining Division as not all of the inventors who were named as applicants in the US priority application had assigned the priority right to the applicants of the respective European patent applications before the PCT application was filed.

As a result, the Enlarged Board of Appeal (EBoA) was asked to determine the following:

  • 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? 
    And if the question I is answered in the affirmative:
  • II. 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?

Question 1

The EBoA determined that the European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. It was reasoned that, unlike the applicant’s entitlement to the application, the existence and the effects of the priority right are governed only by the EPC (and by the Paris Convention through its relationship with the EPC).

Further to this, due to the necessary cooperation of the priority applicant with the subsequent applicant to allow the latter to rely on the priority right, and the lack of formal requirements for the transfer of priority rights, the EBoA established a rebuttable presumption of entitlement to claim priority. Meaning, that under the autonomous law of the EPC, it should be presumed the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.

Question 2

The EBoA confirmed that 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 to the subsequent applicant(s).

In the scenario presented in the questions referred, the joint PCT filing implies an agreement between the parties allowing both parties to rely on priority, and under the rebuttal presumption, implied agreements can be relied upon. However, the EBoA further notes that implied agreements may not be relied upon if there were substantial indications to the contrary.

Significance of the decision

As a consequence of the assessment under EPOs autonomous law, the EBoA considered the EPO should “adapt itself to the lowest standards established under national laws”. The EBoA even goes so far as to indicate that the transfer of priority rights does not need to take place before the later application is filed, stating that if there are jurisdictions that allow an ex post transfer of priority rights, the EPO should not apply higher standards.

This decision reverses the burden of proof for priority entitlement. The new standard according to the EBA is “the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing”. Instead of the applicant/ patentee needing to provide evidence that the priority entitlement is valid, the opponent, or the EPO, must provide “specific facts that support serious doubts” that the priority entitlement is not valid.

Although it will be difficult for an opponent, or the EPO, to provide facts or evidence of this kind due to assignment documents typically being under the control of the applicant, the decision indicates that examples of parties acting in bad faith or disputes between the parties at the relevant date could also throw these implied agreements into doubt.

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