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EPO – Priorities from US provisionals – All applicants approach confirmed

06 Nov 2020

European Patent Office, Technical Board of Appeal 3.3.08, case T 844/18 – CRISPR-Cas/BROAD INSTITUTE

In the beginning of this year, the decision of Technical Board of Appeal 3.3.08 of January 16, 2020 was reported, confirming the consistent practice of the EPO applying the „all applicants“ approach, meaning that the applicant of a European patent claiming a priority has to show, when the validity of the priority right becomes relevant, that he is successor in title of all persons having acquired the priority right by filing the first application.

After some delay, the reasoned decision was issued and today entered into the database of Board of Appeal decisions. It has the following headnote:

i) The board is empowered to and must assess the validity of a priority right claim as required by Article 87(1) EPC,
ii) the board’s interpretation of the expression “any person” in Article 87(1) EPC confirms the long-established “all applicants” or the “same applicants” approach,
iii) the national law does not govern who is “any person” as per Article 87(1) EPC, the Paris Convention determines who “any person” is.

Thus, the decision rejects the three approaches submitted by the proprietor and many legal opinions submitted by the proprietor for attacking the EPO’s and long-established international practice. In respect of the approach addressed in ii) of the headnote, the Board concludes that:

“(t)he current “all applicants” approach is not an obstacle to the exercise of the priority right …. It is an obstacle to one of a multiplicity of original applicants applying on their own for such a subsequent application. There is no evidence that the object and purpose of the Paris Convention is to facilitate such behaviour.”

As to the special situation of priorities from US provisional applications, the Board notes that the Paris Convention is an integral part of US law. Applicants of US provisional applications should be aware of the difficulties, arising from special characteristics of these applications, they may face if they use these applications to claim priority for a European patent application. This is simply a consequence of the US’s adhesion to the Paris Convention.

It is to be hoped that this decision has put an end to the legal uncertainty created by the attacks against the long-established way of examining the right to exercise the right of priority made by the proprietor and the public activities related thereto. This wish may have prompted the Board to observe that

“the “all applicants” approach has been applied, as far as the Board can determine, without exception since at least the early twentieth century by states that are currently member states of the EPC, and by the EPO since its inception. The Board has also found that such a practice can be considered to have a rational basis, in the sense that it is based on a reasonable interpretation of the legal texts in question. The bar to overturning long established case law and practice should be very high because of the disruptive effects a change may have. The continuation of such long standing and rationally based practices can be considered as an aspect of legal certainty.”

Reported by: Dr. Rudolf Teschemacher, Bardehle Pagenberg

A copy of the decision can be read here.