Practical Tips for Avoiding the CRISPR Priority Pitfall in Europe

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The first European patent to be granted in relation to CRISPR technology (EP2771468) has recently been revoked after high-profile opposition and appeal proceedings.

The reason for the revocation was that the Opposition Division and Board of Appeal considered the priority claim to be invalid because the US provisional application from which priority was claimed named more applicants than the subsequent PCT application from which the European application was derived, and the applicant not named on the subsequent PCT application had not transferred his rights to any of the PCT applicants prior to the PCT application filing date. Consequently, prior art that was published between the priority date and the PCT filing date could be cited against the claims and was found to be novelty destroying.

Although the decisions from the Opposition Division and Board of Appeal were in accordance with years of case law and numerous national courts in Europe, the high-profile nature of the CRISPR case has highlighted this issue once again and reminded applicants of the importance of ensuring that documentation proving chain of title is in place before a priority-claiming application is filed.

The Law on Entitlement to Claim Priority in Europe

Article 87(1) EPC states (emphasis added) that “Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.”

Thus, where the priority-founding and priority-claiming applications have been filed with different applicants, one or more of the applicants of the priority-claiming application must be the “successor in title” to the applicants of the priority-founding application. Importantly, the right to claim priority must have been transferred from all of the applicants of the priority-founding application that are not named as applicants of the priority-claiming application.

EPO case law and numerous national courts in Europe (including Germany and England & Wales) have ruled that the applicant(s) of the priority-claiming application must have been the successor(s) in title to the applicant(s) of the priority-founding application at the time of filing the priority-claiming application. The applicant(s) of the priority-claiming application must have the right to claim priority, but do not need to have ownership of the entire priority-founding application. National law may be applied to establish whether or not a transfer of the right to claim priority has actually taken place (e.g. by virtue of assignment).

Problems in relation to this requirement most frequently arise where one or more inventors have been named as applicant(s) of a priority-founding application filed in the USA, but a company (e.g. the inventor’s employer) is named as applicant for the subsequent priority-claiming application (and paperwork proving that succession in title took place before the filing date of the priority-claiming application is not in place). Indeed, this was the case for the recently revoked CRISPR case. However, this issue could arise in any case where one or more of the applicants of a priority-founding application is not named as applicant of the priority-claiming application.

Practice Points

The following practice points may therefore be useful to consider before filing a priority-claiming application that names different applicants to the priority-founding application.

  • Establish whether paperwork is in place to prove any succession in title before the priority-claiming application (e.g. a PCT application) is filed.
  • Ensure that the succession in title from all the applicants of the priority-founding application(s) is considered.
  • Assignment documents executed before the filing date of the priority-claiming application are likely to be sufficient.
  • If assignment documents are not available, other documentation available to prove the succession in title occurred before the filing date of the priority-claiming application could be used. For example, an employment agreement specifying that all inventions made by the employee are automatically transferred to the applicant of the priority-claiming application may be sufficient, providing that the automatic transfer is valid under the national law governing the employment agreement, and providing that the employment agreement was in place when the invention was made. Other types of agreement may also be sufficient depending on the terms.
  • However, check that the wording in any other documentation is clear. It may be preferable to have confirmatory assignment documents in place for added certainty.
  • Note that retroactive assignments dated after the filing date of the priority-claiming application are likely not sufficient under EPO law, even if they would be valid under the national law governing the assignment.
  • Similarly, an obligation to assign is likely not sufficient under EPO law since the transfer must have actually taken place before the filing date of the priority-claiming application.
  • Check that any paperwork relied on is robust since it may be scrutinized in detail in opposition or revocation proceedings post-grant. For example, are the application numbers mentioned in the document correct? Are the identities of the parties involved clear? Did all parties sign the document?
  • If there is any doubt about whether the correct paperwork is in place, all applicants of the priority-founding application could be named as applicants of the priority-claiming application. Where there is only doubt in relation to some of the applicants of the priority-founding application, only those applicants could be named as applicants of the priority-claiming application. This may be in addition to any successor(s) in title to other applicants for which the correct documentation is in place. An assignment can then be recorded at a later date.

Example

A US provisional application was filed naming Inventor A, Inventor B, Inventor C and Inventor D as applicants. The client wishes to file a PCT application claiming priority to the US provisional application and naming Company A as applicant.

Inventor A was a consultant to Company A. An assignment between Inventor A and Company A was executed before the PCT application was filed.

Inventor B was an employee of Company A. Inventor B’s employment agreement (which was in place before the invention was made) specified that all inventions made by Inventor B would automatically be transferred to Company A upon creation. This automatic transfer is valid under the national law governing Inventor B’s employment agreement.

Inventor C was an employee of Company B, which is part of the same group as Company A. Inventor C’s employment agreement (which was in place before the invention was made) specified that all inventions made by Inventor B would automatically be transferred to Company B upon creation. This automatic transfer is valid under the national law governing Inventor B’s employment agreement.

No paperwork at all is available for Inventor D.

Inventor A’s assignment and Inventor B’s employment agreement would likely be sufficient to show that Company A is successor in title to Inventors A and B. However, it would be preferable to also have a confirmatory assignment from Inventor B to Company A in place for added certainty.

However, Inventor C’s employment agreement would not be sufficient on its own to show that Company A is successor in title to Inventor C. Before the PCT application is filed, further documentation should be obtained showing that the right to claim priority was transferred from Company B to Company A (e.g. an assignment agreement). It would also be preferable to have a confirmatory assignment from Inventor C to Company B in place for added certainty.

If it is not possible to obtain the necessary documentation in relation to Inventors C and D before the priority deadline, the PCT application could be filed naming Company A, Company B and Inventor D as applicants. Assignments from Company B to Company A, and from Inventor D to Company A, could then be recorded at a later date.