T 1103/15 - Transfer of priority and US state law

Key points

• In this opposition appeal, the question is whether the priority (of a US provisional) was transferred in time to the applicant. The patentee fails to show this. 
• The Board finds that the proprietor does not have the benefit of the doubt: "a person who claims he is a successor in title within the meaning of Article 87(1) EPC [] has to prove his entitlement where the validity of the claimed priority is at stake []. The Board can therefore not follow the appellant's argument that if there is uncertainty about the validity of a priority claim, the patent proprietor should enjoy the benefit of the doubt." Note that this may be a critical finding. Note furthermore that it applies to both facts and the content of national law, which are both to be evidenced before EPO. 
• US law would be applicable law: "The Board agrees with [patentee] that the applicable national law would then be US law, but notes that the [patentee] does not seem to be sure whether it is a question of federal law or state law." As a comment, the choice of US law does not seem entirely obvious to me. 
• "The main evidence the [patentee] has submitted to support its view is an extract of a judgement D16 from a UK court in which the court found that under English law a priority was validly claimed in the UK, having regard to US federal law and the law of the State of Georgia  whereby the principles of US law had been agreed upon by the parties" 
• " In the view of the Board, D16 does not qualify as suitable evidence to prove the relevant provisions or recognised operations of US law, be it federal or state law. If US state law were applicable, the board assumes it would be the law of Alabama. Therefore there is no convincing evidence on file to prove the appellant's assertion that The University of Alabama is successor in title to the applicants of the earlier application." 
• About evidence of national law in general before the Boards:"  If a party makes statements about conclusions to be drawn on the basis of the applicable national law, it has to file suitable evidence, for example by filing as documents adequate copies of such laws and/or as appropriate by filing as expert evidence the opinions of a suitably qualified lawyer in the relevant jurisdiction" 
• As a comment, what parties agree on (in a court case) regarding  national law is of course not proven in EPO procedures and not binding on the EPO, because EPO has examination of own motion. 

EPO T 1103/15 -  link

Reasons for the Decision

Main request

1. Priority claim

1.1 In its contested decision, the opposition division arrived at the conclusion that the priority US 326704 P of 3 October 2001 was not valid. D3, a document published on 17 April 2002, before the filing date of the patent in suit (3 October 2002), was therefore a document according to Article 54(2) EPC for the claimed subject matter and its content anticipated claims 1 and 15 of the main request (point 2.2.2.4 on page 15 of the decision).

1.2 In the statement of grounds of appeal the appellant did not contest that the main request lacked novelty over D3. The question that the Board had to answer was rather whether the right of priority had been validly claimed to determine whether D3 was a document according to Article 54(2) EPC or not.

1.3 According to board of appeal case law, a person who claims he is a successor in title within the meaning of Article 87(1) EPC and is therefore entitled to claim priority has to prove his entitlement where the validity of the claimed priority is at stake (T 205/14, Reasons Nr. 3.5; T 517/14, Reasons Nr. 2.6; T 577/11, Reasons Nr. 6.1; T 1201/14, Reasons Nr. 3.2.2.2). The Board can therefore not follow the appellant's argument that if there is uncertainty about the validity of a priority claim, the patent proprietor should enjoy the benefit of the doubt.

1.4 According to the appellant, the question whether the right to claim priority has been validly acquired by the applicant of the subsequent application is a matter of national law. This is also the position taken in several board of appeal decisions (T 205/14, Reasons Nr. 3.6.3; T 517/14, Reasons Nr. 2.7.3; T 1201/14, Reasons Nr. 3.1.2). The Board agrees with the appellant that the applicable national law would then be US law, but notes that the appellant does not seem to be sure whether it is a question of federal law or state law.

1.5 If a party makes statements about conclusions to be drawn on the basis of the applicable national law, it has to file suitable evidence, for example by filing as documents adequate copies of such laws and/or as appropriate by filing as expert evidence the opinions of a suitably qualified lawyer in the relevant jurisdiction (T 74/00, Reasons Nr. 4).

1.6 However, the main evidence the appellant has submitted to support its view is an extract of a judgement from a UK court in which the court found that under English law a priority was validly claimed in the UK, having regard to US federal law and the law of the State of Georgia (D16, Nr. 389), whereby the principles of US law had been agreed upon by the parties (D16, Nr. 354). One of the principles the parties had agreed upon was that Georgia law recognises the concept of equitable rights (D16, Nr. 385).

1.7 In the view of the Board, D16 does not qualify as suitable evidence to prove the relevant provisions or recognised operations of US law, be it federal or state law. If US state law were applicable, the board assumes it would be the law of Alabama. Therefore there is no convincing evidence on file to prove the appellant's assertion that The University of Alabama is successor in title to the applicants of the earlier application.

1.8 Under these circumstances, the claim to priority of US 326704 P of 3 October 2001 is not valid and it results from this conclusion that document D3 is a document according to Article 54(2) EPC.

1.9 Since the reasoning of the appealed decision underlying the lack of novelty of claims 1 and 15 of the main request was not contested by the appellant, the Board sees no reason to deviate from the conclusion reached by the opposition division. Claims 1 and 15 of the main request therefore lack novelty in view of D3.