The right to a priority claim: EPO Enlarged Board issues decision in G1/22 & G2/22 

The Enlarged Board of Appeal (EBA) at the European Patent Office (EPO) has issued its much-awaited decision in the consolidated cases G1/22 and G2/22. Chris Poll summarises the ruling and its implications for patent holders. 

The decision in G1/22 and G2/22 addresses two questions: 

• Is the EPO competent to assess whether a party is entitled to priority under Article 87(1) of the European Patent Convention (EPC)? 
• In the affirmative to question 1, is the established ‘PCT joint applicants approach’ valid? 

The PCT joint applicants approach and priority claims 

It is well established that all applicants of a priority filing, or their successors in title, must be named as applicants on a later case, for that later case to validly claim priority to the priority filing. 

The ‘PCT joint applicants approach’ occurs when a PCT application names multiple co-applicants, and at least one of these co-applicants holds the right to claim priority. As we previously covered, this has often happened when a US priority-founding application is filed in the name of the inventors, then the PCT application is filed with the inventors named as applicants for the US, and a legal entity as the applicant for all other states. Several prior decisions have held that the ‘PCT joint applicants approach’ constitutes a valid priority claim. 

In G1/22, a US provisional application was filed in the name of the inventors (applicant A). Then, a PCT application was filed with applicant A named as the applicant for the US, and applicant B named as the applicant for all other states. In opposition proceedings for the subsequent European ex-PCT application, the Opposition Division concluded that the application was not entitled to priority because an assignment from applicant A to applicant B was only effective after the filing date of the PCT application. The European ex-PCT application was then found to lack novelty over intervening prior art. G2/22 concerns a divisional application with the same priority claim, that was likewise found to be invalid, for corresponding reasoning by the Examining Division. 

Under the subsequent appeal, it was considered that the ‘PCT joint applicants approach’ was a disputed concept in view of the case law, and so the aforementioned questions were referred to the EBA. 

The EBA issues interesting decision on priority claims 

In answer to question 1, the EBA concluded that the EPO is competent to assess whether a party is entitled to priority. 

In answer to question 2, the EBA reached a very interesting decision in stating that filing a PCT application by joint applicants A and B implies an agreement between the applicants allowing applicant B to rely on the priority, in a ‘rebuttable presumption’. The presumption is rebuttable because there may be some instances in which the priority applicant may have legitimate reason to not allow the subsequent applicant reliance on the priority. 

One may expect that this decision will make it more difficult for opponents to challenge priority claims in the future, as the burden might be shifted to the opponent to prove a priority claim is invalid, rather than a patentee needing to prove it is valid. 

Whilst the G1/22 and G2/22 decision will be of welcome relief to patent applicants relying on the PCT joint applicants approach, this does not mean that applicants should take a relaxed approach in dealing with their priority claims. As seen in CRISPR, missteps can be catastrophic. 

For any questions about patent filing strategies, including any concerns about patent claims, speak to your Novagraaf attorney or contact our team of European patent attorneys below. 

Chris Poll is a Senior Patent Attorney at Novagraaf in the UK.