The Enlarged Board of Appeal has issued a preliminary and non-binding opinion for the referrals G1/22 and G2/22, which ask (1) whether the EPO has jurisdiction to determine whether a party validly claims priority as successor in title, and (2) in particular for US-derived PCT applications where the applicant for the US is the inventor, the applicant for elsewhere is not the inventor, and the applicant for the priority application is the inventor.
The Enlarged Board has construed the first question broadly, to encompass all situations where the application claiming priority is not clearly identical with the applicant of the priority application. The preliminary opinion does not lean towards an answer on question 1 and instead highlights that there is no consensus amongst submissions received on this point: one side argues that the EPO has, can and should routinely assess priority; the other side argues that this is strictly a matter for civil law of national authorities, relating to ownership of intellectual property.
For the second question, the Enlarged Board indicates that it tends to support the “PCT joint applicants” approach, whereby the priority right of one applicant is enough for all other joint applicants, even when they are applicants for different PCT Contracting States. The Enlarged Board noted broad support for this pragmatic approach, but nevertheless has indicated that its reservations will require discussion.
The oral proceedings are scheduled for 26 May 2023 at 10:00 CET in Munich.
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 HLK advisor.
