T 0407/15 - Transfer of priority

 Key points

• The present decision is about a transfer of priority.
• “[The priority applications] US applications 61/035 540 and 61/035 777 were filed jointly by three persons, who happen to be the inventors mentioned in relation to present application. ... As the applicants of the earlier US applications and later PCT application are not the same, a valid priority claim would require a transfer or rights from the original applicants jointly to the present applicant, before the filing date of the international application.”
• The Board: “Article 87 EPC does not require an express assignment in writing or exclude a transfer by operation of law or by conduct of the parties concerned implying such transfer (cf. T205/14, points 3.3 and 3.6 [vertabtim in 3.3, para 4.]). Independently, however, of the form that the transfer of the priority right might have taken, evidence of such a transfer must be provided in order for the Board to decide on the issue. The standard of proof applied is the balance of probabilities.”
• So: Article 87 EPC does not require an express assignment in writing.
• Article 87 EPC does not exclude a transfer by operation of law
• Article 87 EPC does not exclude a transfer by the conduct of the parties concerned implying such transfer 
• These three points apply independently of the country of filing the priority-founding application.
• Evidence of the transfer must be provided in order for the EPO to decide on the issue.
• The standard of proof applied by the EPO is the balance of probabilities
• These two points also apply independently of the country of filing of the priority-founding application.
• The present case is an appeal against a refusal decision. The Board does not restrict the sentence to examination appeals. 
• In the case at hand, the applicant /appellant “[d]espite having been invited to do so by the Board, [...] failed to provide any evidence that such a transfer took place and that it was entitled to claim these priority rights.”
•  The Application Data Sheet of the two US provisional applications indicated The University of Western Ontario [i.e. the same as the PCT applicant] as the assignee. 
• The Board: “this is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant. This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.”

T 0407/15

https://www.epo.org/law-practice/case-law-appeals/recent/t150407eu1.html

Reasons for the Decision

Entitlement to priority

1. The application was initially filed as an international PCT application on 11 March 2009 by The University of Western Ontario. It claims priority rights from the earlier US applications 61/035 540 and 61/035 777 of 11 March 2008 and 12 March 2008, respectively. The application entered into the European phase on 9 September 2010. The entitlement to claim said priority rights is to be assessed on the basis of the relevant provisions of the EPC.

2. Article 87(1) EPC stipulates that

A person who has duly filed [...] an application for a patent [...], or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority [...].

It follows that the applicant who claims a priority right from an (earlier) application must be the same as or, alternatively, the successor in title to the applicant who filed said application.

3. US applications 61/035 540 and 61/035 777 were filed jointly by three persons, who happen to be the inventors mentioned in relation to present application. The right of priority belongs to them jointly, as in T 788/05 (point 2).

4. As the applicants of the earlier US applications and later PCT application are not the same, a valid priority claim would require a transfer or rights from the original applicants jointly to the present applicant, before the filing date of the international application.

5. Article 87 EPC does not require an express assignment in writing or exclude a transfer by operation of law or by conduct of the parties concerned implying such transfer (cf. T 205/14, points 3.3 and 3.6). Independently, however, of the form that the transfer of the priority right might have taken, evidence of such a transfer must be provided in order for the Board to decide on the issue. The standard of proof applied is the balance of probabilities.

6. Despite having been invited to do so by the Board, the appellant failed to provide any evidence that such a transfer took place and that it was entitled to claim these priority rights.

7. Both US applications 61/035 540 and 61/035 777 contain a section entitled "Assignee information", identifying "The University of Western Ontario" as assignee. This is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant.

8. This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.

9. The fact that the inventors in US applications 61/035 540 and 61/035 777 and the present application are identical, is without any bearing on the legal situation regarding priority, given the absence of evidence of a transfer of priority rights.

10. In the absence of any evidence establishing that the rights of priority have been validly transferred to the applicant, the status of successor in title to the applicants who filed the earlier applications must be denied to the present applicant.

11. In consequence, the applicant is not entitled to either priority.