10 Apr 2018

OD in T 0844/18 - Crispr patent (priority)

Key points

  • The appeal in the case of the Crispr/CAS patent EP 2771468 has file number T 0844/18 and is pending. EP '468 was revoked by the OD for lack novelty caused by invalid priority (from a US provisional) 
  • The OD's written decision of 26.03.2018 is available here
  • The relevant facts are that the US provisional(s) were filed with the inventors as applicants. The PCT application was filed by research institutes as employers. However for some of the inventors named in the US provisional, neither that inventor nor his employer was a (co-)applicant of the PCT application, and there was no transfer of priority right from the inventor to the PCT applicants. The question is whether this makes the priority invalid.
  • The OD does not deviate from EPO's established practice and considers the priority invalid, thereby rejecting three main arguments of patentee.
  • According to the OD, the EPO is competent to examine the validity of priority, also concerning entitlement to priority. The patentee had challenged this competence of the EPO.
  • Furthermore the PCT application must be filed by all applicants of the US provisional (or their successors in title), not by one or more of them, to validly claim priority. The patentee had challenged this based on A87 using "any person".
  • And finally, the question of who is an "applicant" of a US provisional for the purpose of Article 87 EPC is not determined by US national law. Patentee had invoked US law and had submitted that under US national law, the inventors that were omitted as applicant of the PCT application were properly disregarded as "applicant" of the US provisional under US law, because they had not contributed to the invention of the PCT application. 
  • EPO T 0844/18  (EPO T 844/18) - The OD's written decision of 26.03.2018 is available here. The file is here.

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