T 0725/14 - Transfer of priority

Key points

• In this opposition appeal, the opponent asserts that the priority is invalid because the applicant Avantium had assigned the priority right (to a company Furanix) during the priority while later filing the PCT application in its own name. Because the priority right had been assigned before, the applicant did not have it at the PCT filing date and the priority is invalid, according to the opponent (the assignment is visible in the file of the published priority application EP06075565.9)
• So, in this case, it is the patentee who asserts that his own assignment of the priority is invalid.
• "[T]he transfer of a priority right has to be assessed by applying national law (see for example T 0205/14 []). The national law that applies to the assignment of the priority right is in general determined by the conflict of law rules of the court seised, here the board. However, such rules are absent in the EPC and the law derived from the EPC and thus no guidance is given in establishing the applicable national law." The parties however agreed that Dutch law was applicable; moreover, the priority application is a European patent application and the parties are Dutch.
• The assignment document D17 had been validly signed (by one person validly acting for both assignor and assignee) and stated that Avantium "declares to have assigned all rights pertaining to European Patent application Nos. [.priority application at issue]" to Furanix.
• The Board finds that this is an assignment of the priority right as well and is effective as an assignment (despite not using "herewith assigns"). The Board takes into account the intent of the parties as required for the interpretation of contracts under Dutch law.
• " The fact that only two weeks after the assignment Avantium filed the parent application, invoking the right to priority, is not convincing proof of the alleged intention either. Possibly and more likely, it had been overlooked that the application would now have to be filed in the name of Furanix to invoke the priority right." 
• The Board also holds that the term "or" in Article 4 Paris Convention stating " "Any person who has duly filed...an application for a patent... or his successor in title, " is an exclusive or. Hence not both the assignee and assignor can claim the priority right.
• The patentee had also request correction of the applicant identity under Rule 139 EPC. The Board applies the test of G1/12 and finds that requirement A is not met (" The correction must introduce what was originally intended"). 
• " From the onset of these appeal proceedings, the respondent has consistently argued that the true intention underlying assignment D17 was for Avantium to retain the priority right for the invention disclosed in the priority application. Therefore, the true intention was not to file the parent application (II, supra) in the name of Furanix. In any case, no proof of such an intention has been provided." 
• Furthermore, the request was not filed "without delay" (requirement D of G1/12).

EPO T 0725/14 -  link

Assignment of the priority right under Article 87 EPC

4. As mentioned in II above, the contested patent results from a divisional application divided from the parent application PCT/EP2007/002146. This parent application was filed on 12 March 2007 in the name of Avantium. It claims priority from the application published as D1, also filed in the name of Avantium.

In the present case, the claimed priority right is thus valid only if Avantium had the right to invoke the right to priority based on the priority application when the parent application was filed. This is common ground between the parties.

However, it is disputed whether the priority right had been transferred to Furanix by way of document D17 before the parent application was filed, and if so whether this transfer invalidates the priority of the parent application and consequently of the opposed patent.

4.1 The respondent argues that the priority application had been transferred to Furanix only after the filing of the parent application, specifically on 24 October 2007, the date in which a request was sent to the European Patent Office to register the transfer of the priority application, see D18. Therefore, in accordance with Rule 22 EPC, the alleged assignment of the priority right was effective only on 24 October 2007. The board, however, does not agree. Rule 22 EPC and the cited decisions T 1751/07 and T 976/97 that deal with Rule 22 EPC (Rule 20 EPC 1973) have no relevance to the present case. This rule concerns procedural aspects of the registration of a transfer of a European patent application and the effect of a transfer vis-à-vis the European Patent Office only. It has no bearing on the establishment of the right to priority. The alleged assignment of the priority application from Avantium to Furanix has thus to be fully examined.

4.2 The appellant contests the validity of the claimed priority right, relying on the alleged assignment of the right by Avantium, the applicant of the priority application and the parent application, to Furanix on 1 March 2007. The burden of proof of the alleged assignment is therefore on the appellant.

4.3 According to established case law, the transfer of a priority right has to be assessed by applying national law (see for example T 0205/14 reasons, point 3.6.3 and T 1201/14 reasons, point 3.1.2). The national law that applies to the assignment of the priority right is in general determined by the conflict of law rules of the court seised, here the board. However, such rules are absent in the EPC and the law derived from the EPC and thus no guidance is given in establishing the applicable national law.

Neither the appellant nor the respondent have put forward any views in this respect, but they agree that the law of the Netherlands is applicable. The board sees no reason to deviate from that position. The priority application is a European application. It is not regulated by any national law and thus does not require the application of any particular national law. All other conceivable relevant circumstances point to the application of the law of the Netherlands. Avantium and Furanix are both companies established under the law of the Netherlands with registered offices in Amsterdam, the Netherlands. In addition, document D17, the "declaration of assignment" was signed in Amsterdam. The alleged assignment will therefore be assessed by applying the law of the Netherlands.

4.4 In an earlier stage of the appeal proceedings, the respondent questioned whether under the law of the Netherlands a priority right was transferable, separately from the priority application. The board understands that this issue is no longer relevant as the respondent now accepts and even underlines that the priority right is a separate right that can be transferred separately or with the entitlement to the priority application (see point XV, supra).

4.5 Document D27 explains that under the rules of the Dutch Civil Code, assignment of the priority right requires a formal delivery, which is in this case a written instrument, signed by the assignor and the assignee, intended to serve as evidence. The delivery should have a valid legal basis, i.e. a legal relationship that underlies and justifies the assignment or - expressed in a different way - a fact by which a party is obliged to the assignment. The assignment should furthermore be made by a person with the power to dispose of the right.

4.6 Document D17 is signed on behalf of both Avantium and Furanix by Mr T B van Aken, the Chief Executive Officer of both companies. It can be assumed, and it has not been disputed, that Mr T B van Aken had the power to dispose of the priority right.

Document D17 states that Avantium "declares to have assigned all rights pertaining to European Patent application Nos. 06075564.2 and 06075565.9" to Furanix, the latter application being the priority application in the present case. Document D17 further states that Furanix "declares to accept all these rights".

Document D17 is clearly drawn up to bring about an assignment of rights as well as to serve the purpose to provide proof of what has been agreed between the contracting parties, Avantium and Furanix, i.e. of the legal basis for the assignment. In the board's view, the aforementioned requirements of a formal delivery grounded on a valid legal basis have thus been met, and the document is sufficient to execute the assignment under the law of the Netherlands of the priority right, which is one of the rights pertaining to the patent application. The board sees no basis to assume that under the law of the Netherlands the wording "all rights" would not be sufficient for this purpose and that the assignment would require explicitly mentioning the right to priority.

The board does not accept the respondent's view that the wording "declares to have assigned" (allegedly intended to merely evidence an assignment that occurred in the past) instead of "assigns" would disqualify the document as the instrument for the assignment of the priority right. It has clearly been the intention of Mr T B van Aken (acting for Avantium as well as Furanix) to sign a document to effectuate the assignment on a particular date, which is also clear from the statement that Furanix "declares to accept all these rights". Such a statement does not make sense if the assignment had already taken place. In any case, the wording of document D17 clearly points to the assignment of the priority right to Furanix on 1 March 2007 or an earlier date.

4.7 The board accepts that under the law of the Netherlands, in particular according to the "Haviltex" principle, the intentions of the parties, which possibly contradict the wording of a contract, are relevant or even decisive for the interpretation of an agreement. However, this principle does not need to be considered further as the respondent did not prove such contradictory intentions for the following reasons.

The alleged intention to retain the priority right is not expressed in document D17. It is highly unlikely that if the intention would have been to retain the priority right, this would not have been explicitly mentioned and that the wording "all rights" would have been used instead. Even more so because the respondent, as it explained, had obtained advice from its patent attorney regarding the assignment and the wording of the document, and would therefore have considered the objective meaning of the document.

In his statement (annex 2 to D27), Mr T B van Aken confirmed that "In 2007 business considerations compelled me to assign European application EP 06075565.9 to Furanix and to retain the Priority Right for Avantium" and that "Avantium International did not assign the Priority Right from Avantium International to Furanix on 1 March 2007, nor was it the intention of either Avantium International or Furanix or the aim of the Declaration to assign it". However, these alleged intentions are not corroborated by any contemporary document. It is not credible that the alleged decision to assign the entitlement to the priority application but to retain the priority right had not been communicated internally or with the company's patent attorney in writing. For these reasons alone, Mr T B van Aken's statement is not convincing.

The fact that only two weeks after the assignment Avantium filed the parent application, invoking the right to priority, is not convincing proof of the alleged intention either. Possibly and more likely, it had been overlooked that the application would now have to be filed in the name of Furanix to invoke the priority right.

4.8 As document D17 is intended to provide proof of the assignment of rights, its persuasive weight is considerable. The counter-evidence put forward by the respondent is not convincing. It must therefore be held that the appellant has complied with the burden of proof of the alleged assignment of the priority right.

4.9 The priority claim of the opposed patent is thus invalid.

Article 4 Paris Convention - Referral to the Enlarged Board of Appeal

5. Article 112 EPC stipulates that "In order to ensure uniform application of the law, or if a point of law of fundamental importance arises" the board shall refer questions to the Enlarged Board of Appeal, in particular upon request from a party, "if it considers that a decision is required for the above purposes" (emphasis added by the board).

5.1 The board is convinced that no decision of the Enlarged Board is required in the present case. In the board's view, the formulation in accordance with Article 4 of the Paris Convention of Article 87 EPC, in particular the wording "Any person who has duly filed...an application for a patent... or his successor in title, shall enjoy...a right of priority" (emphasis added by the board) renders perfectly clear that the mentioned right of priority pertains either to the first applicant or to its successor in title. In other words, contrary to what was submitted by the respondent, the "or" in Article 87 EPC and Article 4 of the Paris Convention must unambiguously be read as an "exclusive or".

5.2 The board is not aware of any board of appeal decisions giving a different interpretation to the mentioned wording of Article 87 EPC. The use of the word "successor" alone implies that a right has been transferred, i.e. that it does not pertain to the first applicant anymore. This reading of Article 87 EPC is in line with, for instance, decision J 19/87, according to which the right to priority pertains either to the first applicant or, in case of a valid transfer, to its successor in title. The entrusted legal board decided (reasons, 2) that the first applicant for an invention was entitled to apply for a subsequent application for the same invention since its successor in title (National Research and Development Corporation (NRDC)) had validly transferred the rights of the invention back to it. The first applicant was therefore in turn the successor in title of NRDC to the invention and a "declaration of priority was therefore properly made on the Request for grant form, in accordance with Article 88(1) EPC".

5.3 Documents D33 and D34, which were submitted in support of the respondent's view about an "inclusive or", do not discuss the alleged retainment of the right to claim priority in spite of an assignment of that right to a successor in title either.

5.4 On the basis of Article 87 EPC, the board is thus in a position to answer both questions posed by the respondent (XIII, supra) affirmatively. The respondent's request to refer those questions to the Enlarged Board of Appeal is therefore refused.

5.5 As a consequence, the board cannot accept the view that that priority can be claimed by the original applicant or its successor in title or by both the original applicant and the successor in title.

Request for correction under Rule 139 EPC

6. In its last submission dated 21 December 2018, the respondent argued for the first time that should the board conclude that all rights, including the right to priority, were assigned by means of D17 from Avantium to Furanix, then a correction under Rule 139 EPC of the name of the applicant of the parent application (II, supra) should be allowed. The name "Avantium International B.V." should be changed to "Furanix Technologies B.V.".

It argued that the applicant's interest in gaining optimum protection and a third party's interest in maintaining legal certainty had to be balanced and that in the present case, the public would not be affected by the correction requested.

Moreover, the respondent argued that the criteria for an allowable correction as set out in G 1/12 had been met in the present case.

7. The board disagrees. In G 1/12 (OJ, 2014, A114), the Enlarged Board stated that "The boards of appeal, in particular the Legal Board of Appeal, have developed a large body of case law on corrections under the first sentence of Rule 88 EPC 1973 (first sentence of Rule 139 EPC) and established the following principles:

(a) The correction must introduce what was originally intended. For example, an applicant wishing to add a designation not originally intended on filing cannot rely on the first sentence of Rule 88 EPC 1973 (J 8/80, OJ EPO 1980, 293, in particular Reasons No. 7). The possibility of correction cannot be used to enable a person to give effect to a change of mind or development of plans (J 8/80, loc. cit., Reasons No. 6; J 6/91, OJ EPO 1994, 349). It is the party's actual rather than ostensible intention which must be considered.

(b) Where the original intention is not immediately apparent, the requester bears the burden of proof, which must be a heavy one (J 8/80, loc.cit., Reasons No. 6).

(c) The error to be remedied may be an incorrect statement or an omission.

(d) The request for correction must be filed without delay" (emphasis added by the present board).

From the onset of these appeal proceedings, the respondent has consistently argued that the true intention underlying assignment D17 was for Avantium to retain the priority right for the invention disclosed in the priority application. Therefore, the true intention was not to file the parent application (II, supra) in the name of Furanix. In any case, no proof of such an intention has been provided. The above mentioned criterion (a) is thus clearly not met.

Additionally, under criterion (d), a correction should have been requested without delay, i.e. as soon as it was realised that the parent application was filed in the wrong name. The parent application was filed in the name of Avantium on 12 March 2007, while the request for correction was filed on 21 December 2018 and conditional on a negative opinion of the board as regards the transfer of the priority right from Avantium to Furanix. The above criterion (d) is therefore also clearly not met.

For these reasons, the request of the respondent for a correction under Rule 139 EPC is refused.