New EPO Enlarged Board of Appeal Referral Relating to Priority

By Joseph Lenthall, Partner

The European Patent Office (EPO) has referred two new questions relating to priority  to the Enlarged Board of Appeal under G1/22 and G2/22. The first question relates to whether or not the EPO has jurisdiction to decide whether a party validly claims to be a successor in title. If the EPO can decide on this point, the second question then asks whether priority is validly claimed under the so-called “joint-applicants’ approach”.

The joint applicants’ approach has surfaced in recent years and been adopted by several Opposition Divisions. However, the EPO Boards of Appeal have yet to confirm that the approach is valid under the European Patent Convention (EPC), and so the referral is much needed clarification in a fundamental area of European patent law.

The right to priority allows applicants to file a patent application but claim the filing date of an earlier application. However, there are specific requirements for claiming priority at the EPO.  An error in any one of these requirements may lead to a loss of priority with potentially significant consequences on validity.

The present referral relates to situations where:

  • the first application is filed in the name party A (for example, the inventors); and
  • the later PCT application designates (i) party B for Europe and (ii) party A (e.g. inventors) for another country (e.g. the US).

Several of the EPO Opposition Divisions have decided that the PCT application has been filed by the same applicant as the earlier application without the need to show evidence of a transfer of priority right from party A to party B. The rationale is that party A are applicants on the PCT application (despite not being designated for the EPO), and so the parties have acted as joint applicants on the PCT application.

This referral follows closely behind the referral on plausibility in G2/21. Both of these referrals address issues frequently encountered in EPO opposition and appeal procedures. Do get in touch with your usual HLK attorney or Dr. Joe Lenthall if you wish to discuss either of these referrals in more detail.

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 hlk@hlk-ip.com or your usual Haseltine Lake Kempner advisor.