1786/15 - Transfer of priority

 Key points

• In this opposition case, the decisive issue is transfer of priority.  The priority stems from a US provisional application filed int he name of the inventors.
• The critical document is “D51: Ownership reallocation policy, as applicable to The Massachusetts General Hospital, dated 18 September 2002.” However, that document is not signed and “therefore it cannot provide conclusive evidence that the reallocation policy, set out therein, was in fact adopted”. 
• The Board: “The appropriate standard of proof to be applied in this factual situation is not the balance of probabilities. Indeed, in cases where all evidence supporting a specific statement of fact (for instance a public prior use) is within the power and knowledge of one party, the Boards of Appeal apply a stricter standard of proof, namely the standard "beyond reasonable doubt"”.
• This point might be very important in practice. 
• The Board does not itself positively decide on which law is applicable to the alleged transfer, in view of the parties agreeing on that point.

 1786/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151786eu1.html

Entitlement to priority of document D1 (Article 87 EPC)

5. In the proceedings before the opposition division, the opponent (now respondent) challenged the patent proprietor's entitlement to claim the priority stemming from document D1 (see Section VII., above)

6. The opposition division agreed with the opponent's objection and consequently considered that document D8, published in the priority interval, was prior art and decisive in assessing the patentability of the subject-matter of claim 1 of auxiliary requests 1 and 2.

7. In appeal, the appellant challenged this point of the decision, arguing that the priority was validly transferred. In view of this, the first question to be answered is whether or not the patent can validly claim the priority of document D1.

8. It was common ground between the parties that:

(i) the EPO is entitled to examine whether or not an applicant can claim the priority of a previous filing;

(ii) the applicant can only claim the priority of document D1 if a transfer from the inventors to the applicant occurred before the filing date of the PCT application, document D2;

(iii) the question of whether such transfer occurred should be determined according to national law;

(iv) the relevant national law, in the present case is US law: federal law where the effect of the assignment is concerned, state law where the construction of the contract is concerned.

9. For the purpose of the present decision, the board does not, ex officio, challenge any of the above points of consensus between the parties. Instead, it will address the main point of disagreement between the parties, being the question of whether or not documents D31 and D51 demonstrate, according to the applicable standard of proof (see point 13., below), that the appellant acquired ownership of the priority right created with the US filing of document D1 before the date of filing of the PCT application, without the need for any separate additional transfer.

10. In the appellant's view, document D31 demonstrates that:

(i) all ownership of intellectual property rights - including future priority rights - were transferred by the inventors to 'The Massachusetts General Hospital', the parent company of The General Hospital Corporation.

(ii) this allocation of ownership could, pursuant to paragraph 2.4 of document D31, be changed at any time.

11. The appellant submitted that document D51 showed that a reallocation with respect to the invention at issue and the priority right based on document D1 actually occurred and that this transfer was possible without any further involvement of the inventors, since they had agreed in principle to this reallocation by virtue of paragraph 2.4 of document D31. On the other hand, the respondent contested that document D51, the 'Policy Reallocating Ownership of Intellectual Property', had been adopted at the relevant date.

12. The board notes that the appellant, having been the applicant, bears the burden of proof for demonstrating that the reallocation of ownership of the priority right took place in 2002.

13. The appropriate standard of proof to be applied in this factual situation is not the balance of probabilities. Indeed, in cases where all evidence supporting a specific statement of fact (for instance a public prior use) is within the power and knowledge of one party, the Boards of Appeal apply a stricter standard of proof, namely the standard "beyond reasonable doubt" (see decision T 472/92, OJ EPO 1998, 161, point 3.1 of the reasons and Case Law of the Boards of Appeal, 9th edition, 2019, III.G.4.(b), with further references to the case law). In the case at hand, all evidence for the possible transfer of the priority right claimed is in the hands of the appellant.

14. The board notes that document D51 is the key piece of evidence that purports to demonstrate that the right to claim priority from document D1 had been transferred to the appellant. However, in the board's judgement, document D51 does not demonstrate to the required standard of proof that a reallocation of priority rights, had taken place by the filing date of document D2, 16 February 2006. This is because document D51 is unsigned and therefore it cannot provide conclusive evidence that the reallocation policy, set out therein, was in fact adopted.

15. Document D58, a declaration of an employee working for a company affiliated with the appellant, does not fill the gap in the evidence highlighted above. It does mention the date on which document D51 was allegedly adopted, however this is not corroborated by any evidence contemporary with document D51. For this reason, also document D58 does not represent sufficient evidence to meet the standard of proof required.

16. Finally, the appellant brought forward a line of argument according to which the applicant had at least equitable title in the invention before the filing date. However, at the oral proceedings, after the board communicated to the parties that it considered the transfer of the priority based on document D1 to The General Hospital Corporation had not been proven beyond reasonable doubt by documents D51 and D31, the appellant accepted that the same applied to the transfer of the equitable title. Transfer of the equitable title has therefore not been proven to have taken place for the reasons as explained above. The question whether such a transfer would be sufficient to accept the validly of the priority right therefore need not be considered.

17. As the priority claimed by the patent cannot be acknowledged, the board considers the documents published in the 12 months following the priority date and, in particular, document D8 to be prior art pursuant to Article 54(2) EPC.