T 0205/14 - Assignment priority right

EPO T 205/14
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Key points

• The priority application was a US provisional filed in the name of the inventors. There was no explicit assignment document signed before the filing of the PCT application. The applicant of the PCT filing was the company employing the inventors. The question is therefore whether the applicant nevertheless was the successor in title, as required for a valid priority claim? 
• However, the decision is especially interesting because it discusses thoroughly the preliminary questions of how this must be decided, in particular according to which law.
• After a detailed reasoning, the Board concludes, about the applicable law, that the validity of the transfer is a matter of national law (thereby not following T 62/05), and the applicable national law in this case is the law governing the legal relationship between the transferor and the transferee of the right of priority (rather than that state of filing of the first application).
• The Board starts the detailed reasoning by noting that "it is generally accepted that the right of priority is transferable independently of the corresponding first application which can remain with the original applicant. [...] It is thus an independent right up and until it is invoked for one or more later applications to which it becomes an accessory. The right of priority has thus to be distinguished from the right to the patent deriving either from substantive law or from the status of being the applicant of the first application." 
• " If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority " 
• " Decision T 62/05 considered that the transfer of right of priority had to be be proven in a formal way and that it was therefore appropriate to apply an equally high standard of proof as required by Article 72 EPC 1973. The present board cannot follow this reasoning (....)  
• In the board's judgment, the assessment of whether the applicant of a European patent application is "successor in title" within the meaning of Article 87(1) EPC 1973 of the right of priority deriving from an earlier application is the exclusive concern of national law.
• In the board's judgment, the following considerations militate in favour of the law applicable to the legal relationship between the transferor and the transferee of the right of priority, and against the law of the state of filing of the first application (...)
• For the above reasons, the board concludes that, in the present case, the law of the state of the employment relationship between the three original applicants and the respondent determines the transfer of the right of priority. " 

Reasons for the Decision

1. The appeals are admissible.

[...]

3. Entitlement to priority

3.1 The appellants contested the entitlement of the patent in suit to the priorities from US applications No. 60/604,026 of 23 August 2004 (P1) and 60/690,867 of 16 June 2005 (P2). They argued that the respondent had failed to prove to the required standard that, on the date of filing of the international application number PCT/US2005/030500, published as WO 2006/024024, the rights of priority derived from the US provisional applications (P1) and (P2), both filed in the name of the three inventors, had been validly transferred to the respondent. As a consequence, the date of filing of the international application WO 2006/024024 was the effective date for determination of the relevant state of the art, and document (33) had to be regarded as constituting state of the art within the meaning of Article 54(3) EPC and was thus novelty destroying.

3.2 The applicable provisions of the EPC 1973 and of the EPC in force as of 13 December 2007 are determined in accordance with the decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000 and with Article 2 of the Decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000 (OJ EPO 2007, Special Edition No 1, 89, 197).

3.3 Pursuant to Article 87(1) EPC 1973, a right of priority, that is, the right to claim priority for a European patent application from the filing date of an eligible "first application" (or "previous application" in Article 88 EPC), originates in the applicant of said first application. Therefore, in principle, the applicant has to be the same for the first application and for the subsequent application for which the right of priority is invoked. Where the first application has been filed jointly by two or more applicants, the right of priority belongs to them jointly (T 788/05, point 2 of the reasons).

However, pursuant to Article 87(1) EPC 1973, the right of priority may also be invoked by the "successor in title" of the person who has filed the first application. By reference to the "successor in title", it is recognised that the right of priority, being a legal right, may be transferred from the original applicant to a third person (T 62/05, point 3.6 of the reasons; see also T 5/05, point 4.2 of the reasons; T 788/05, point 2 of the reasons; T 382/07, point 9.1; T 1933/12, points 2.3 and 2.4 of the reasons; Grabinski, in: Benkard (Ed.), EPÜ, 2nd edition 2012, Art. 87 No. 3; Bremi, in: Singer/Stauder (Ed.), Europäisches Patentübereinkommen, 6th edition 2013, Art. 87 No. 53).

It is generally accepted that the right of priority is transferable independently of the corresponding first application which can remain with the original applicant. Furthermore, the right of priority may be transferred to a third person for one or more countries only (T 62/05, point 3.6 of the reasons; see also Grabinski, in: Benkard (Ed.), EPÜ, 2nd edition 2012, Art. 87 No. 3; Bremi, in: Singer/Stauder (Ed.), Europäisches Patentübereinkommen, 6th edition 2013, Art. 87 No. 53). It is thus an independent right up and until it is invoked for one or more later applications to which it becomes an accessory. The right of priority has thus to be distinguished from the right to the patent deriving either from substantive law or from the status of being the applicant of the first application.

The board does not share the appellants' view that the characterisation of the right of priority as a right independent of the right to the priority application implies that the valid transfer of a priority right inevitably requires a separate and express assignment declaration. The requirements for a valid transfer of rights of priority is a matter distinct from the characterisation as an independent legal right. Article 87 EPC 1973 is silent on the requirements for a valid transfer of rights of priority. It neither requires an express assignment in writing nor excludes a transfer by operation of law or by conduct of the parties concerned implying such transfer. This issue will be addressed in more detail below (see point 3.6).

3.4 The reference to the "successor in title" in Article 87(1) EPC 1973 is also interpreted as requiring a transfer of the right of priority before the filing of the subsequent application (implicit in T 493/06, point 11 of the reasons; Grabinski, in: Benkard (Ed.), EPÜ, 2nd edition 2012, Art. 87 No. 4; Bremi, in: Singer/Stauder (Ed.), Europäisches Patentübereinkommen, 6th edition 2013, Art. 87 No. 53 and 54; Ruhl, Unionspriorität, 2000, p. 100 No. 262; Teschemacher, Anmeldetag und Priorität im europäischen Patentrecht, GRUR 1983, 695, p. 699; see at national level: document (79), point 11 of the reasons; Patents Court, decision of 12 June 2009, Edwards Lifesciences AG v Cook Biotech Incorporated [2009] EWHC 1304 (Pat), point 95 of the reasons; Patents Court, decision of 23 June 2010, KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [2010] EWHC 1487 (Pat), point 54 of the reasons; see also Wieczorek, Die Unionspriorität im Patentrecht, 1975, p. 142).
The board is aware of diverging opinions (see Moufang, in: Schulte (Ed.), Patentgesetz mit Europäischem Patentübereinkommen, 9th edition 2014, §41 No. 28; German Federal Patent Court, decision of 28 October 2010, 11 W(pat) 14/09, BlPMZ 2011, 255, point B.2)a)cc) of the reasons). This divergence is, however, not relevant for the outcome of the present decision (see below point 3.7).

3.5 If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority (T 1008/96, point 3.3 of the reasons; T 493/06, point 8 of the reasons). In the present case, the burden of proof is therefore on the respondent to establish that

a) before the date of filing of the international application WO 2006/024024 (see the proviso in point 3.4 above)

b) the right of priority derived from the US provisional applications (P1) and (P2) had been transferred to it

c) by the three original applicants and inventors

d) in accordance with the requirements of the relevant law.

3.6 Before assessing the evidence on file, the relevant law that governs the requirements for a valid transfer of the right of priority for the filing of a European patent application under Article 87(1) EPC 1973 has to be determined. Neither Articles 87 EPC 1973 and 88 EPC, nor Rules 52 and 53 EPC set out any such requirement.

3.6.1 Decision T 62/05 (points 3.8 and 3.9 of the reasons) considered that the transfer of right of priority had to be be proven in a formal way and that it was therefore appropriate to apply an equally high standard of proof as required by Article 72 EPC 1973.

The present board cannot follow this reasoning, which was relied upon by the appellants.

The standard of proof defines the degree of persuasion that is required in order to convince the deciding body of the existence of an alleged fact. The standard applied by the boards of appeal is "balance of probabilities" which amounts, in practice, to proof on preponderant balance of evidence. The seriousness of the consequences of alleged facts should not make any difference to the standard of proof to be applied in determining these facts. Article 72 EPC 1973 does not concern the issue of standard of proof, but sets out formal requirements for a valid assignment of a European patent application and thereby limits the means of giving or obtaining evidence for the determination of such a transfer. Relying on Article 72 EPC 1973 would thus establish an exclusionary rule of evidence, in that it excludes all evidence which is not in the form as required by Rule 20 EPC 1973. Having regard to Article 117 EPC and the principle of free evaluation of evidence, such an exclusionary rule of evidence should not be extended beyond its scope of application.

Article 72 EPC 1973 constitutes harmonised law with respect to the formal requirements for a transfer of a validly filed European patent application and overrules as lex specialis national law which, in general, governs legal acts related to property interests in such applications (Article 74 EPC 1973). No reason is apparent for applying Article 72 EPC 1973 by analogy in the context of a transfer of right of priority preceding a subsequent filing:

As regards its material scope, Article 72 EPC 1973 is concerned with the transfer of a European patent application and the associated rights, foremost the right to the grant of a patent to which the applicant is assumed to be entitled (Article 60(3) EPC 1973). The right of priority derived from a first application only becomes an accessory to subsequent applications for which it was rightfully invoked. Until then, the right of priority is a distinguishable right that is transferable independently of the corresponding first application. Thus, applying Article 72 EPC 1973 to the transfer of a right of priority in view of a subsequent European patent application would, in the case of a European first filing, ignore the fact that the priority right is a right independent of the right to the first application and, in the case of a non-European first filing, that Article 72 EPC 1973 does not govern the relationship between the applicant of a European patent application and a different applicant of a distinct first application. Indeed, the provisions concerning a transfer of rights, namely Article 72 EPC 1973 in conjunction with Rule 20 EPC 1973, and the related provisions (Articles 60(3) EPC 1973 and 61 EPC) serve another purpose. They define the conditions under which the EPO may take into account questions of substantive law and procedural acts by a person other than the registered applicant (J 2/01, OJ EPO 2005, 88, point 3 of the reasons).

Neither the systematic context (Articles 61 EPC, and 60(3), 72, and 74 EPC 1973), nor the preparatory work to Article 72 EPC 1973, which is silent with respect to the question of transfer of the right of priority, leave room for applying Article 72 EPC 1973 in a way which goes beyond its clear wording. The board therefore concurs with the decision of 16 April 2013 of the German Federal Supreme Court (filed as document (79), point 13 of the reasons) that Article 87 EPC does not require a formal and separate assignment as provided by Article 72 EPC.

3.6.2 The board further considered the question whether the silence of the EPC with respect to the requirements for a valid transfer of a right of priority implies that there are no formal requirements for such a transfer under the EPC. It would thus be possible to establish a transfer of a right of priority using any kind of evidence within the meaning of Article 117 EPC. It would be sufficient to demonstrate such a transfer by way of conduct of parties to a contract implying the transfer in the circumstances of the case. However, this would exclude the possibility of a transfer by operation of law which can only be established by reference to a (comprehensive) legal system. Also, the board's assessment of the evidence adduced will inevitably need to be made by reference to defined formal and material requirements. As an example, the question whether it is sufficient to have a declaration by the transferor only or whether an employee may transfer all its future rights in an invention to an employer cannot be resolved under the EPC. It has to be born in mind that the EPC does not establish a fully harmonised patent system, although a high degree of harmonisation between the EPC and national laws has indeed been achieved. Neither the interpretation of the EPC nor the application of Article 125 EPC, which refers to procedural law only, constitute a proper basis for further harmonisation to the extent that the EPC does not clearly provide for harmonised law itself. For these reasons, the board did not take silence as a conscious choice of the legislator that the transfer of a right of priority is free of requirements as to form and content.

3.6.3 Since the provisions of the EPC do not lend themselves to an autonomous determination of the requirements for the transfer of right of priority, the validity of such transfer is a matter of national law. The board concurs in this respect with decision T 1008/96, point 3.3 of the reasons. The board also notes that other decisions have relied on national law when assessing the validity of a transfer of the right of priority (see T 160/13, point 1.1 of the reasons; J 19/87, point 2 of the reasons; implicit in T 493/06, points 9 to 11 of the reasons).

The appellants argued that it had been the intention of the legislator not to burden the EPO with questions of substantive national law. While it is true that it was held with respect to the purpose of Article 60(1) and (3) EPC 1973 that the EPO should not be concerned with questions of entitlement in terms of substantive law and should have no power to determine disputes as to whether or not a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application (J 2/01, OJ EPO 2005, 88, point 2.6 of the reasons, citing G 3/92, OJ EPO 1994, 607, point 3 of the reasons), this reasoning cannot be extended beyond the context of Article 60(1) and (3) EPC 1973. The EPC does not, as a matter of principle, bar the organs of the EPO from applying substantive national law governing an incidental question which is decisive for the outcome of the proceedings before the EPO (see for example G 3/99, OJ EPO 2002, 347, point 9 of the reasons; G 1/13, points 2.3.3, 5.1, 6 to 8 of the reasons). In the board's judgment, the assessment of whether the applicant of a European patent application is "successor in title" within the meaning of Article 87(1) EPC 1973 of the right of priority deriving from an earlier application is the exclusive concern of national law.

The above cases did, however, not address the issue of the choice of the applicable national law. Indeed, the determination of the applicable national law seems to have been straightforward in view of the circumstances of the respective cases:

- In case J 19/87, the inventor, resident of the UK, filed a UK patent application. He then assigned his rights to the invention and to the UK patent application, together with the right to file further patent applications in respect of the invention and the right to claim priority from the UK application to a company with place of business in the UK. This company, in turn, assigned back the rights in the invention and the UK application and agreed that the first assignment was void. The inventor then filed a European patent application claiming priority from the UK patent application. All circumstances relevant to the transfer of right of priority (residence, place of business, state of of the first filing, assignment contracts) thus related to UK law, and the board was safe in applying this national law to the question of entitlement to the priority.

- In case T 1008/96, the European patent application resulting in the patent in suit claimed the priorities of two Italian utility model applications. The patent proprietor, a company with place of business in Italy, alleged that the applicant of the two Italian utility model applications, an Italian resident, had assigned these applications to it. One of the opponents produced an Italian Court decision according to which the transferor was still the owner of the first of the two priority applications after the date of the alleged assignment. Again, all circumstances relevant to the transfer of right of priority (residence, place of business, state of first filing, assignment contracts) were connected with Italy and thus with Italian law. The legal situation under Italian law appears not to have been backed up by detailed evidence and the decision was taken based on the evaluation of the conflicting evidence on file.

- In case T 493/06, the entitlement to priority of an international patent application which constituted state of the art within the meaning of Articles 54(3) and (4) EPC 1973 was contested. This application to which one of the opponents was co-applicant claimed priority of five UK patent applications. Two of these were filed in the name of a professional representative, having its place of business and residence in the UK, who had acted as trustee. An assignment document was produced relating to the transfer from the trustee to the opponent, a company with place of business in the UK. Also in this case, the factual circumstances were connected to the UK, implying the application of UK national law.

- Finally, case T 160/13 concerned the transfer within a corporate group. The patent in suit was filed as an international application by an affiliate with place of business in France and claimed the priority of a German utility model application, which had been filed by an affiliate with place of business in Germany. Here, the place of business of the transferor, the state of filing of the first application and the assignment declaration by the transferor (e-mails sent by an employee of the German affiliate) were factual elements connected to German territory. Only the place of business of the transferee tended to the application of a law other than German law. Unfortunately, in this case, neither the opposition division nor the board justified their explicit choice of German law.

3.6.4 In none of the above decisions was the law of the state for which protection was sought by the subsequent filing considered to be relevant. Indeed, in the case of a subsequent European patent application this would require harmonised law. The above decisions, however, provide no guidance as to whether, in the assessment of the validity of a transfer of the right of priority, the law applicable to the legal relationship between the transferor and the transferee of the right of priority, such as corporate agreement, employment contract, or universal succession, should apply, or the law of the state of filing of the first application. Whereas this point of law was not at issue in the cases referred to above, it is relevant to the present decision: The applicants of the US provisional applications (P1) and (P2) were employees of the respondent working in Israel. Thus, whereas the first filings point to US law, the employment relationship is connected to Israel.

3.6.5 Articles 87 EPC 1973 and 88 EPC and Rules 52 to 53 EPC are silent on the choice of law to be made with respect to the assessment of the validity of a transfer of rights of priority. Nevertheless, in the absence of harmonised law, the board must determine the applicable national law, since this is essential for reaching a decision as to whether said transfer has been properly established and proven by the party bearing the burden of proof in this respect.

In the board's judgment, the following considerations militate in favour of the law applicable to the legal relationship between the transferor and the transferee of the right of priority, and against the law of the state of filing of the first application:

- In view of the potential legal implications of the date of (first) priority in the assessment of patentability or validity of a patent application or patent, it is imperative that applicants and the public at large be provided with legal certainty and predictability with respect to the rules of law governing the subject of claiming priority, including the assessment of validity of a transfer of the right of priority.

Many factors may be envisaged that might influence the choice of state for the filing of a first application. A first applicant intending to transfer its priority right might not therefore anticipate that the law of the state of filing of the first application might govern its relationship with a transferee and that they might have to comply with this law even when there is no connection between the state of first filing and their legal relationship.

On the other hand, the transferor and transferee of the right to priority will be familiar with the law that governs their legal relationship and thus be aware of any formal requirements regarding the transfer of the right of priority. The application of this law will not hamper legal certainty, since, in the event that the entitlement to the priority becomes relevant, the applicable law can be ascertained and verified on the basis of the evidence that the applicant or proprietor will have to provide.

- The law of the state of filing of the first application is relevant for the determination of a regular first application (Article 87(2) EPC 1973). The fate of such first application does not, however, prejudice the right of priority claimed for a subsequent application (Article 87(3) EPC 1973). Moreover, the transferability of the right of priority as such is determined by Article 87(1) EPC 1973, independently of the law of the state of filing of the first application. Therefore, there is no connection between this law and the question of a valid transfer.

- Finally, the board also notes that Article 60(1), second sentence, EPC 1973 provides a conflict-of-law rule for the determination of the entitlement to the invention in an employment relationship. According to this provision, the law of the state in which the employee is mainly employed is applicable, or, alternatively, the law of the state in which the employer has its place of business to which the employee is attached. Albeit not applicable to the right to priority, this conflict-of-law rule reflects the understanding of the legislator that mutual obligations of employer and employee in relation to the transfer of an intellectual property right arising from the employee's efforts shall be governed by the law of the state to which the employment relationship is most closely connected. Moreover, this choice of law follows on from Article 60(1), first sentence, EPC 1973, which uses the term "successor in title" without defining it and thereby leaving its determination to national law.

3.6.6 For the above reasons, the board concludes that, in the present case, the law of the state of the employment relationship between the three original applicants and the respondent determines the transfer of the right of priority. At the time of filing of the international application WO 2006/024024, the original applicants were employees of the respondent (see point 3.7.1 below). Both the state where the original applicants were employed and the place of business of the respondent, to which the original applicants were attached, are Israel. Therefore, Israeli law applies.

3.7 Turning to the evidence before it, the board had to evaluate whether it provided proof that

a) before the date of filing of the international application WO 2006/024024

b) the right of priority derived from the US provisional applications (P1) and (P2) had been transferred to the respondent

c) by the three original applicants and inventors

d) in accordance with the requirements of Israeli law.

3.7.1 Documents (65b), (65c), and (65d) provide conclusive evidence that the three inventors and applicants of the US provisional applications (P1) and (P2), Ms Revital Lifshitz, Mr Thomas Bayer and Ms Judith Aronhime, were employees of the respondent. These documents also show that the employment relationship existed at the time when the invention can be presumed to have been made, namely, before the filing of the US provisional applications (P1) and (P2). Even though the letter setting out the conditions of employment of Ms Judith Aronhime (document (65d)) has a date which is after the filing date of the US provisional application (P1), reference is made in said letter to her appointment as of 1 August 2004. Furthermore, the first confidentiality agreement between the respondent and Ms Judith Aronhime was signed on 24 April 1994. This shows that Ms Judith Aronhime was an employee of the respondent even before her appointment to her position as of 1 August 2004.

3.7.2 The invention giving rise to the US provisional applications (P1) and (P2), as well as to the international application WO 2006/024024, qualifies as a service invention under Chapter 8 of the Israeli Patents Law 5727-1967, which is applicable in the present case (reference is made herein to the English translations filed as documents (66f) and (66g)). The first expert opinion of Mr Tal Band of 21 May 2012 (document (66a), point 7 of the opinion) provides proof for this factual and legal aspect. Mr Tal Band confirmed his assessment in a second opinion dated 1 June 2014 (Exhibit 2 to document (77), point 7 of the opinion). The board sees no reason to doubt the conclusion reached in these opinions.

3.7.3 The respondent argued that it had acquired the right of priority derived from the US provisional applications (P1) and (P2) by operation of section 132 of the Israeli Patents Law 5727-1967. In support of its contention, the respondent relied on the opinions of its expert, Mr Tal Band (documents (66a) and (77), Exhibit 2).

Section 132 of the Patents Law 5727-1967 reads as follows:

"Inventions in consequence of service

(a) An invention by an employee, arrived at in consequence of his service and during the period of his service (hereafter: service invention) shall, in the absence of an agreement to the contrary between him and his employer, become the employer's property, unless the employer relinquishes the invention within six months after the day on which notification under section 131 was delivered to him.

(b) If, in his notification under section 131, the employee stated that - in the absence of a contrary reply from the employer within six months after delivery of the employee's notification - the invention will become the employee's property, and if the employer made no contrary aforesaid reply, then the invention shall not become the employer's property."

In both, his first and second opinion, Mr Tal Band provided the following opinion on the legal effects of section 132 of the Israeli Patents Law 5727-1967 (documents (66a) and (77), Exhibit 2, points 8 to 10):

"8. Once an invention is deemed to be a service invention, and in the absence of any agreement to the contrary between the employer and the employee, Section 132 of the Patents Law provides that the invention shall become the property of the employer. Israeli law does not require any written instrument of assignment in such circumstances to transfer the ownership rights in the service invention from the employee (or employees) to the employer. The full ownership of a service invention inherently vests in the employer by virtue of the law, once the invention is arrived at by the employee.

9. The employer's ownership of a service invention would inherently entail, under Israeli law, the right to file a patent application on the invention. The employer's ownership of a service invention further entails the right to claim priority from an application filed on the invention abroad (i.e. in any country which is "a Member State", as defined in Section 1 of the Patents Law), by the employees, for and on behalf of the employer. Accordingly, it is my opinion that, under Israeli law, the right to claim priority from such an application inherently vests in the employer, without any need for a written instrument of assignment of the specific right of priority from the employees to the employer.

10. I was advised by Teva, and accordingly it is my factual assumption for the purpose of this expert opinion in connection with the ending passage of Section 132(a) above, that Teva never renounced the invention. It is also my understanding, and accordingly my factual assumption for the purpose of this expert opinion, that none of the three inventors in the present case gave Teva a notification that would render Section 132(b) applicable."

3.7.4 The board has no reason to doubt the above conclusions by the respondent's expert. It is true that an opinion by an expert who has represented a party "in numerous proceedings" (see documents (66a) last sentence of the second paragraph, and document (77), Exhibit 2, last sentence of the second paragraph) may, upon free evaluation of the evidence, carry less weight than a court decision, another independent authority under the national law, or an expert commissioned by the board under Article 117(1)(e) EPC together with Rule 117, first sentence, EPC. Nevertheless, an opinion of a party's expert is a means of evidence under Article 117(1) EPC. In the present case, the appellants did not file any contrary evidence. Of course, both the legal and evidentiary burden of proof rested on the respondent to establish its right to claim priority from the US provisional applications (P1) and (P2). The appellants could therefore limit themselves to casting doubt on the credibility of the evidence adduced by the respondent. However, in doing so, they ran risk that, in the absence of further evidence disproving the conclusions in the respondent's expert opinions, the board could decide in favour of the respondent, if the appellants' challenge to the evidence before the board did not give rise to substantiated doubts as to the veracity of these expert opinions.

3.7.5 The board cannot make out any flaws in the opinions of Mr Tal Band.

The finding that, under Israeli law, the full ownership of a service invention belongs to the employer, by virtue of the law and without any need for a written instrument of assignment, is confirmed by the wording of section 132 of the Patents Law 5727-1967. Since the invention that gave rise to the US provisional applications (P1) and (P2) qualified as a service invention within the meaning of section 132 of the Patents Law 5727-1967 (see point 3.7.3 above), the right to the invention passed to the respondent under said provision. Moreover, the factual assumptions in the opinions that the respondent had not relinquished the invention giving rise to the US provisional applications (P1) and (P2), and that the invention had not remained with one of the inventors under section 132(b) of the Patents Law 5727-1967, have never been contested by the appellants.

The second step in the chain of argument, namely, that the employer's ownership of a service invention further entails the right to claim priority from an application filed by the employees for and on behalf of the employer, was also not reasonably put into doubt. It is true that the right of priority is not mentioned in section 132 of the Patents Law 5727-1967. However, it follows from section 140 of the Patents Law 5727-1967 that the aim of section 132 is to vest the employer with the rights to obtain worldwide protection for service inventions made by his employees. The appellants did not invoke any other provision or legal authority which would support the view that the right of priority was excluded from the operation of section 132 of the Patents Law 5727-1967 and which would have put into question the expert's conclusion that the employer's ownership of a service invention further entails the right to claim priority from an application filed on the invention abroad.

The appellants argued that section 140 of the Patents Law 5727-1967 merely created an obligation of the employee to act in the interest of the employer and therefore required with respect to the transfer of the right of priority an express written assignment executed by the employee. The board does not agree.

Section 140 of the Patents Law 5727-1967 reads as follows:

"If a person made a service invention and if the ownership of it passed, in whole or in part, to his employer under section 132 or by agreement, then he must do everything required of him by the employer in order to obtain protection for the invention to the employer's benefit in any place whatsoever, and he must sign any document required therefor; if he does not do so, then the Registrar may permit the employer to do so after he has given the employee an opportunity to state his arguments."

It follows from the wording of this provision that the employee's obligation to sign a document is only stated with respect to a corresponding requirement in the law of the state of the filing of a patent application. It cannot be read into section 140 of the Patents Law 5727-1967 that a valid transfer of the right of priority requires a declaration of assignment executed by the inventor. Apart from the fact that section 140 does not make any reference to the right to priority, such an interpretation would create an additional hurdle for the employer in obtaining patent protection for service inventions and thus run counter to the aim of this provision. Since the Patents Law 5727-1967 does not provide elsewhere for formal requirements for the transfer of the right of priority, the transfer of the right of priority arising from a first filing by an employee-inventor does not, under Israeli law, require any written document signed by the employee in accordance with section 140 either. It is therefore reasonable to conclude from sections 132 and 140, with respect to a service invention, that the right of priority arising from a first filing by an employee-inventor - albeit being a right separate of the right to the invention - will devolve to the employer as a necessary correlate of the employer's entitlement to seek worldwide protection for the invention.

3.7.6 For the above reasons, the board was satisfied that the respondent had discharged its burden of proof and provided convincing evidence for the fact that the right of priority derived from the US provisional applications (P1) and (P2) had been transferred to the respondent before the date of filing of the international application WO 2006/024024.

3.8 The board was not persuaded by the appellants' counter-arguments:

3.8.1 The appellants brought forward the argument that, with respect to a transfer of the right of priority, a distinction had to be made between the obligation to assign the rights and the separate act of assignment. They maintained that the contractual arrangements in documents (65b), (65c) and (65d) merely created obligations. Such obligations could not be regarded as proof for a subsequent valid transfer of rights. With respect to the right of priority, the fulfillment of the contractual obligations of the inventors and original applicants therefore required a separate assignment. According to the appellants, the respondent had failed to provide proof for such assignment.

It is true that, with respect to Rule 20 EPC 1973, a distinction is made in the jurisprudence of the boards of appeal between an obligation to assign a right and the assignment itself (J 4/10, point 5.4 of the reasons; J 12/00, points 2 and 14 of the reasons). This jurisprudence pertains, however, to Article 72 EPC 1973, which is not applicable in the present case. Such a distinction has no bearing on the transfer of a right of priority if, according to the applicable national law, the right is transferred by operation of law (e.g. merger or succession), or if an assignment does not require specific formalities and thus can be implied from the circumstances. This is, for example, the case under German and Swiss national law (T 160/13, point 1.1 of the reasons; document (79), points 12 and 14 of the reasons; Bremi, epi Information 1/2010, page 18, left-hand column, second complete paragraph).

In the present case, the applicable Israeli law on service inventions does not require particular formal requirements to be fulfilled; in particular, it does not require a separate and express assignment. Even if, for the sake of argument, section 132 of the Patents Law 5727-1967 regarding service inventions were to be disregarded, a transfer of the right of priority can nevertheless, in the absence of formal requirements under Israeli law, be agreed orally between the employee and the employer, or even be manifested by way of circumstances implying such transfer. Thus, even when considering the contractual arrangements (documents (65b), (65c) and (65d)), in particular the agreement that no proprietary or other right to a service invention remained with the employees, and the obligations under section 140 of the Patents Law 5727-1967 only, the circumstances were such that the filing of the international application WO 2006/024024 claiming priority from the US provisional applications (P1) and (P2) in the name of the respondent (except for the United States of America and Barbados) would, in the board's judgement, imply a mutual agreement between the inventors and the respondent on the transfer of the right of priority to the latter.

3.8.2 The appellants also pointed to differences in the extent of the respective contractual obligations of the three inventors and employees (documents (65b), (65c) and (65d)). It is true that the degree of detail on which the rights and duties are stated varies among the respective arrangements. However, even the less detailed contractual agreements (that is, the confidentiality agreement dated 16 August 1998 and signed by Ms Revital Lifshitz, document (65b), and the first confidentiality agreement dated 24 April 1994 and signed by Ms Judith Aronhime, document (65d)) state that all rights in a invention arrived at by the employee in the course of or in connection with the employment, exclusively belong to the employer without any proprietary or other right remaining with the employee. Thus, all contracts confirm and reflect what is set forth in section 132 of the Patents Law 5727-1967. The further obligation to sign any document as required by the employer in order to obtain patent protection is not to be found in the confidentiality agreements referred to above. However, such obligation existed already under section 140 of the Patents Law 5727-1967. Therefore, the contractual arrangements neither contradict nor do they depart from the regulation on service inventions enshrined in Chapter 8 of the Patents Law 5727-1967. Since the respondent provided conclusive evidence, which was not countered by any evidence filed by the appellants, that the right of priority derived from the US provisional applications (P1) and (P2) had been transferred to the respondent before the date of filing of the international application WO 2006/024024 by operation of section 132 of the Patents Law 5727-1967, the alleged differences in the contractual arrangements are not relevant for the present decision and would in any case not lead to a different conclusion.

3.8.3 According to the appellants, it was not clear from the confidentiality agreements (that is, in the case of Ms Revital Lifshitz, the confidentiality agreement dated 16 August 1998 included in document (65b); in the case of Mr Thomas Bayer, the undated Appendix B entitled "Safeguarding Trade Secrets, protection of intellectual Property and Non Compete Agreements" included in document (65c); and in the case of Ms Judith Aronhime, a first confidentiality agreement dated 24 April 1994 and Appendix B dated 19 December 2004 entitled "Letter of undertaking to maintain confidentiality, intellectual property and non-competition", both included in document (65d)) who the potential transferee of a right of priority was. The relevant passages referred to "the Company and/or ... the Subsidiary Companies" or to "Teva Group" or "Teva" which were, in a nutshell, defined as any corporation controlled by Teva Pharmaceutical Industries Ltd. or Teva, respectively. The board, however, agrees with the opposition division that there is no doubt that the employment agreements were concluded between the respondent and the respective inventors and applicants of the US provisional applications (P1) and (P2). Therefore, the respondent was employer within the meaning of Chapter 8 of the Patents Law 5727-1967. Whether the respondent could have transferred its rights to affiliated companies is relevant only with respect to the designation of Barbados, but not for the case under consideration.

3.8.4 The appellants also pointed to an incoherence in dates as regards the opinion of Mr Tal Band signed on 21 May 2012 (document (66a)) and the reference to an opinion of Mr Tal Band in the earlier opinions of Mr Patrick J. Birde dated 15 February 2012 (document (67a)) and of Mr Robert C. Millonig and Ms Gaby L. Longsworth dated 23 April 2012 (document (67b)). Moreover, document (67a) refers to an "Expert Opinion of Adv. Tal Band, dated 14 February 2012". The respondent provided a letter dated 2 June 2014 (document (77)) of Mr Patrick J. Birde wherein he states that a review of three versions of the opinion of Mr Tal Band dated 14 February 2012, 21 May 2012 and 1 June 2014, respectively, revealed small differences. The existence of different versions of an expert opinion is as such not sufficient to cast the opinion into doubt. What matters is whether or not the versions are contradictory or incoherent. In the present case Mr Tal Band confirmed and reiterated his opinion dated 21 May 2012 (document (66a)) on 1 June 2014 (document (77), Exhibit 2). There are no deviations that could give rise to substantiated doubts.

3.8.5 Appellant opponent 5 argued that the respondent had not registered as assignee of the US provisional applications (P1) and (P2). In the opinion of appellant opponent 5 this created doubt as to the respondent's entitlement to claim priority from these applications. However, since the fate of a first application does not prejudice the right of priority claimed for a subsequent application and because the right of priority can be transferred independently of the right to the first application, the question of entitlement to the US provisional applications (P1) and (P2) is not relevant. Even though registration of the respondent as assignee of the US provisional applications (P1) and (P2) might have provided corroborating evidence for an implied transfer of the right of priority, such evidence was not required in the present case.

3.9 Consequently, the board holds that the international application WO 2006/024024 enjoys the earliest priority date of 23 August 2004.