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EPO’s Enlarged Board of Appeal issues decision in G1/22 (priority claims)

By Harriet Crawford, Associate

In a landmark decision this week, G1/22 , the EPO conveyed that a patentee-friendly approach to claiming priority will be the new norm. The approach they will now take is that there a rebuttable presumption that a priority claim is valid. This will be reassuring especially for US applicants who file priority applications with the inventors as applicants and PCT applications with the assignee/employer as applicant. For opponents in EPO oppositions, an easy way to attack priority based on non-identical applicants has now been closed, or at least much less likely to succeed. For example, the simple filing of a PCT application naming different parties will be taken as sufficient evidence of an agreement between them on the claim to priority. While the presumption of validity is “rebuttable”, it seems this is in exceptional circumstances, with the decision indicating that this essentially restricts this option to those who may have a claim to the title of the application or patent itself.

The assumed entitlement to priority extends to all priority-claiming European patents and applications, regardless of whether the priority applicant(s) are (a) identical with the priority-claiming applicants; (b) joined by others in the priority-claiming application; (c) not all listed as applicants in the priority-claiming application; (d) all absent as applicants in the priority-claiming application.

Join us for a short webinar on Thursday 19 October (15:30-16:00 CEST) in which Alex Rogers and Joseph Lenthall will be discussing this decision and what it means for you, either as patent owners or opponents. Register to attend ‘G1/22 and G2/22 – A landmark decision from the EPO on priority’, here.

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact or your usual HLK advisor.

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