T 1975/19 - Transfer of priority

Key points

• The presumption of G 1/22 is rebuttable. However, the question is: how can it be rebutted? 
• R.110: "The presumption that the subsequent applicant is entitled to the priority right is a strong presumption under normal circumstances since the other priority requirements (which establish the basis for the presumption of priority entitlement) can usually only be fulfilled with the consent and even cooperation of the priority applicant (see above points 104 ff). The party challenging the entitlement to priority can thus not just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant's entitlement to priority."
• The Enlarged Board seems to say here (and in r.113) that the presumption can be rebutted by the opponent (when contesting the priority of a patent) by "demonstrate[ing] that specific facts support serious doubts about the subsequent applicant's entitlement to priority"
• However, the Enlarged Board also states, in point 110: "The rebuttable presumption involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing."
• The present Board: "The party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing (see point 110 of the reasons [of G1/22]). The presumption that the subsequent applicant is entitled to the priority right is a strong presumption under normal circumstances. The party challenging the entitlement to priority cannot just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant's entitlement to priority."
• "Here, the evidence on file does not establish that the priority applicants did not allow the subsequent applicant to rely on the priority."
• "However, in the Board's view, considering that G 1/22 establishes a strong presumption of validity and places the burden on the opponents to prove the contrary, the lack of evidence of a transfer of the right to priority to the subsequent applicant cannot be equated with a proof that this transfer did not take place."
• The question is how point 110 of G 1/22, as a whole, must be interpreted: as prescribing that the opponent must show that something (an assignment, not even a tacit one) did not take place, or if it is sufficient for the opponent to raise substantiated "serious doubts", after which the normal rules of evidence apply?
•  "Absent any further circumstances, evidence of a transfer of the right to priority to a third party other than the subsequent applicant, such as to Alcon Inc. (see T 2431/17, point 1.5.5 of the reasons, third paragraph), does not amount either to a proof that this right to priority was not, in turn, further transferred to the subsequent applicant. "
• In this case, the inventors (applicants of the US provisional serving as the priority application) had assigned their rights to Alcon Inc. in advance in their employment contracts; there is proof of that.  Indeed, there could be an assignment (e.g. a simple email) from Alon Inc. to the applicant of the PCT application (Alcon Research Ltd.). 
• "considering the low standards applicable under the autonomous law of the EPC, in which even informal or tacit transfers of priority rights are normally accepted (see G 1/22, points 99-100 of the reasons), the fact that document D61 is entitled "License agreement" does not prima facie demonstrate either that the transfer to the subsequent applicant did not take place."
• There is indeed a license agreement between the PCT applicant and another legal entity in the group that was said to have acquired the IP rights of Alcon Inc. (see T2431/17 r.1.5.4.(c)). The proprietor had filed this document and a declaration about it in the T2431/17 procedure. 
• "as explained in G 1/22 (see point 106 of the reasons), the presumption also applies if the title to the subsequent application has not been acquired from the priority applicant but from a third party having the right to the invention in the respective territory. 
• "The presumption also applies if the title to the subsequent application has not been acquired from the priority applicant but from a third party having the right to the invention in the respective territory (for example, from the inventor, see above the figure in point 74). Also in this situation, the priority applicant must provide the necessary support under Article 88(1) EPC, and the common predecessor with respect to the title to the two applications must be deemed to consent to the subsequent applicant's reliance on the priority right like any priority applicant assigning the title to the subsequent application."
• "This presumption applies all the more in the case at hand considering that all parties involved are legal persons belonging to the same group and their employees. 
• "Accordingly, the appellants' [opponents'] late submissions are not prima facie convincing."
• The newly filed documents and objections are not admitted under Art. 12(4) RPBA 2007. 

Cross-case binding effect

• "The patent in suit derives from a divisional application. The present Board issued decision T 2431/17 in respect of the patent deriving from the parent application. In this decision, the Board, following the established case law at the time, which placed the burden of proof on the applicant asserting that priority is rightly claimed (see point 1.5.3 of the reasons), found the priority to be invalid because the succession in title had not been credibly established. The appellants invoke a binding effect of this earlier decision. The Board does not agree."

• "At most, the principle of res judicata may be applicable, though some Boards have questioned whether a final decision taken in opposition appeal proceedings could have any "cross-procedural" res judicata effect at all on separate opposition (or opposition appeal) proceedings concerning a patent granted on a divisional "

• Cross-case res iudicata was accepted in T 51/08. 

• "Res judicata is a matter finally settled by a court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies, such a final judgment constituting an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies ([CLBA] V.A.10.1). As explained in T 167/93 (see point 2.5 of the reasons), this principle is of extremely narrow scope and supposes, among others, not only that the parties are the same but also that the issues of fact are the same. This is however not the case here, considering at least that the claim requests are different (in which the present case differs from T 51/08 cited by the appellants) and that the admittance of the priority issue was not under debate in the parent case T 2431/17. For these reasons already, the Board considers that the principle of res judicata is not applicable, i.e. that it neither precludes the respondent from pursuing the present different claim requests in the divisional case at hand, nor mandates that the issue of priority entitlement be admitted in the present appeal proceedings, and even less that it be considered settled."

• I'm not sure if the relevant facts are different between the two cases. Howeve, the Board does not seem to imply that if the facts would have been the same, it would have followed T51/08.

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t191975eu1