15/08/2023
Continuing our great track record before the EPO Boards of Appeal, Reddie & Grose were recently involved in a key Board of Appeal case (T 1946/21) for our client. Not only were we successful for our client but the decision raised some interesting points of law. In particular, in the decision, the EPO Board of Appeal clarified that, to meet the requirement of “successor in title” for a priority claim under Article 87(1) EPC, the right to priority does not need to be assigned before the filing date of the priority-claiming application; it is sufficient for the right to priority to be assigned before the filing of the priority-claiming application.
Background and timeline:
In this case, a priority application was filed on 5 September 2013 by applicant X. This priority application was published on 7 May 2014. At 20:17 CET on 5 September 2014, the right to claim priority from the priority application was assigned from applicant X to applicant Y. Later that day, a PCT application claiming priority from the priority application was filed by applicant Y. The present decision relates to an opposition-appeal on a European patent stemming from this priority-claiming PCT application.
The publication of the priority application before the filing of the PCT application meant that, if the priority claim were not valid, the priority application would have been prior art under Article 54(2) EPC for the patent and therefore citeable for both novelty and inventive step attacks against the patent.
It is therefore unsurprising that the opponent (and an intervenor) argued that the priority claim was not valid because the right to priority was not assigned before the filing date of the priority-claiming PCT application.
Reddie & Grose, representing the patent proprietor at appeal proceedings, argued that assigning the right to priority before the filing date is not a requirement for a valid priority claim, and ultimately that the priority claim was valid.
Legal position before this decision:
Article 87(1) EPC states the following:
“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”.
So, under Article 87(1) EPC, the applicant of the priority-claiming application must be either the person who filed the priority application or his successor in title.
It is settled case law that, for the requirement of “successor in title” for a priority claim under Article 87(1) EPC, it is insufficient if the right to priority was assigned after the priority-claiming application was filed. The succession in title must have taken place by the time the priority-claiming application is filed (see T 577/11, Reasons 6.5.2, for example).
However, as set out by the Board of Appeal in the decision on this case the case law had “not been settled on the question of whether the agreement must have been concluded… and thus the assignment must have been effective, before the filing date of the subsequent application or whether it is sufficient for this to have been done on the same day but before the actual filing.”.
This decision:
In this case, the Board sided with the patent proprietor and concluded that the right to priority does not need to be assigned before the filing date of the priority-claiming application; it is sufficient for the right to priority to be assigned before the filing of the priority-claiming application. The Board agreed that the law does not state that the right to priority to must be assigned before the filing date, nor is there any reason to read such a requirement into the law.
To support their conclusion, the Board considered the potential repercussions of requiring assignment of the right to priority before the filing date of the priority-claiming application: Such a requirement would lead to a situation where a successor in title, who obtained the right to priority on a certain day by way of an assignment, always has to wait until the next day to file a priority-claiming application to enjoy its right to claim priority. Further, in that situation, there would be a period (between completion of the assignment and the following day) where no one could enjoy the right to priority. Further still, if the right to priority were assigned on the final day of the twelve-month period to claim priority under Article 87(1) EPC, then if the successor in title had to wait until the next day to file a priority-claiming application, they would miss the deadline and be unable to enjoy the right to priority. Neither Reddie & Grose nor the Board of Appeal could see any convincing reasons why this should be the case.
Our comments:
We are pleased with this decision; it appears to allow an assignee of a right to priority to enjoy that right immediately and, in our opinion, is in line with the intention of Article 87(1) EPC. However, there is no guarantee that territories outside Europe, or even all EPC contracting states, will take the same view. We therefore recommend ensuring that assignments of the right to priority are completed before the filing date of any priority-claiming applications wherever possible. And, where this is not possible, we recommend recording the time of the assignment and the time of filing any priority-claiming application. This could save the patent proprietor if they later needed to show that the assignment took place before the priority-claiming application was filed.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
