The EBA’s Decision in G1/22 and  G2/22 answers both key questions in the affirmative: YES, the EPO can examine entitlement to priority; and YES, the PCT ‘Joint Applicants’ approach gives a valid priority claim at the EPO.

This article looks at the EBA decision and considers the headline answers and the underlying details, especially the rebuttable presumption (see detail below) now introduced.

Introduction to the Decision

On 10 October 2023, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) published its decision in combined referrals G 1/22 and G 2/22: “Entitlement to Priority”.

The referrals arose in cases T2719/19 and T1513/17. While the referring board (3.3.04) agreed with the conclusion in T844/18 that the EPO had an obligation to examine the right to claim priority, it nevertheless raised questions.

First was the related general question of whether the EPO could examine successor in title when examining priority. Second was the specific question of how examination of priority applies to a PCT application, entering the EPO regional phase, when the EP applicants do not include the parties named as applicants for the priority filing(s) – the priority claim being accepted as valid under the so-called PCT ‘Joint Applicants’ approach (as far back as 2014 the EPO accepted this indicated consent from the non-named applicants for the filing of the EP application with that claim to priority).

Reminder of the Questions

Briefly: Question I of the referral asked if the EPO has power to examine successor in title when examining right to claim priority, and Question II asked whether the PCT ‘Joint Applicants’ approach results in a valid claim to priority.

EBA Decision

The EBA has answered as follows:

Question I.

Yes – “the EPO is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC”.

Question II.

Yes – the PCT ‘Joint Applicants’ approach results in a valid claim to priority because “the joint filing [of a PCT application] implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual implications to the contrary”.

The EBA also made the following comments relevant to both answers:

There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.

The rebuttable presumption also applies in situation where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).

Our articles are for general information only. They should not be considered specific legal advice, which is available upon request. All information in our articles is considered to be accurate at the date of publishing.

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