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EPO – Priorities from US provisionals – All applicants approach confirmed

17 Jan 2020

EPO, Technical Board of Appeal 3.3.08, case T 844/18

 In January 2018, the Opposition Division revoked European patent 2 77 461 relating to an important aspect of the CRISPR Cas technology on the grounds of lack of novelty, denying claimed priorities from US provisional applications because not all of the applicants of the first applications were co-applicants of the Euro PCT application on which the opposed patent was granted.

In their appeal, the proprietors presented three lines of arguments in support of their position that the priorities should be acknowledged:

  • The EPO does not have the competence to decide on the question whether the applicant has the right to exercise the right of priority ( Bremi GRUR Int. 2018, 128).
  • In case of a plurality of applicants having filed the first application, one or a subgroup of them should be entitled to exercise the right of priority (abandoning the “all applicants approach”).
  • For determining who is entitled to exercise the right of priority, the law of the country in which the first application was filed should be decisive, i.e. in case T 844/18 US law.

Oral proceedings before the Board started on January 13, 2020. After opening the oral proceedings at the beginning of the third day, the Chairman informed the parties that the Board envisaged to refer questions relating to an important point of law concerning all three approaches of the proprietor to the Enlarged Board of Appeal in accordance with Article 112 (1) a) EPC.  However, in the afternoon of the fourth day, after discussion of the proprietor’s three lines of argument, the Board came to the conclusion that they were in a position to answer any questions directly and unambiguously by reference to the EPC. Thus, a referral was not required and the appeal was dismissed.

The system of provisional applications as internal priorities was introduced in 1995. When conceiving the system, the US legislator did not follow the model of the priority system provided by the Paris Convention according to which a first application gives rise to a priority right for the whole of its disclosure which is jointly enjoyed by the person(s) who have filed the first application. Rather, US law attributes the priority right from a provisional application to the inventor who has made the invention. If the provisional application comprises a plurality of inventions, it gives rise to a corresponding number of priority rights attributed to the respective inventor(s). It is clear that the two systems do not fit together. This is why applicants claiming a US priority have the choice to indicate different inventors/applicants for the US only and for the other designated States in the PCT request form.

The written decision will be issued in due course.