T 0844/18 - CRISPR Cas / Priority

 Key points

• The Board's written decision in the Crispr-cas case has been issued. The Board gives it publication code [D], interestingly enough. Still, a Press Communiqué was issued (here). The decision is also given a headnote.
• The Press Communiqué is, of course, no legal basis but gives a useful introduction to this decision, which seems useful as the file is > 46.000 pages as of yet. 
• The facts are basically that the patent is not novel or not inventive if the priority claim is not valid, the priority application was a US provisional application filed by inventors A and B jointly, the PCT application by the employer of A only, without any assignment of rights from A to B. 
• The Communiqué: “The first question addressed by the Board was whether entitlement to priority should be assessed by the EPO or rather in entitlement actions before national courts. The Board concluded that Article 87(1) EPC both empowered and obliged the EPO to assess the validity of a claim to priority.”
• The Board: “The position of the appellants [patentees] is that the EPO should not concern itself with the "who" issue when applying Article 87(1) EPC, they are content with the EPO assessing the "where", "what" and "when" issues. The Board disagrees with the appellants' position. The EPC clearly sets out a requirement that the EPO examines the "who" issue of priority entitlement.”
• The Communiqué: “The second question was how to interpret the expression ‘any person’ in Article  87(1) EPC. Under the established practice both at EPO and national level, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application, allowance being made for successors in title. The Board confirmed this so-called ‘all applicants’ approach.”
• The Board: “The Board is of the same view; the ordinary meaning of this term [‘any person’] in all the language versions is ambiguous. The Board also finds of little assistance the context in which this term is used in the EPC and the Paris Convention.” (r.44)
• “if a group of persons decides together to carry out this act of filing, then they have decided to act as a unity for this purpose, thus implying that the "any person" is this group as such.” (r.50). 
• The Board: “the appellants are faced with over 100 years of consistent case law and practice adopting the "all applicants" approach that they need to show as incorrect. This is a considerable burden” (r.53). (also stating: “In general, the bar for overturning long established case law and practice should be a high one because of the disruptive effects a change may have.").
• The Board, unfortunately, does not identify any of the old court decisions specifically. “the Board has noted the following: very few cases appear to have addressed this issue, and these cases are very old, from the first thirty years of the twentieth century, or very recent, from the last fifteen years or so.” No details are given, only T 0788/05 is mentioned in the decision. Wieczorek p.146-147 refers to relevant old decision starting from KPA 25.10.1917, BPMZ 1917, p.120. As observed by Wieczorek, fn. 185 on p.147, the Ladas in his (American) handbook defended the 'each individual applicant approach'. The OD decision, para. 66.4.2 lists the old court decisions (same as given Wieczorek) as well as the newer decisions.
• The Board's analysis in r.68 regarding  Swiss judgement O2015_009 is remarkable; let me add that Judge Bremi was rapporteur in that Swiss case. 
• The group of 'all applicants' can exercise their priority right only jointly, r.82 implicitly.
•  The patentees had argued that with the 'all applicants' approach, one applicant can create a hostage situation. The Board: “An applicant can progress a patent application before the EPO without the active participation of the other applicants even though they are named in the application.” I'm not sure what the Board means, but the Request for Grant form must be signed by all applicants; R.41(2)(h) and GL A-III,4.2.2:  "If there is more than one applicant, each applicant or his representative must sign the request". 
  
  
• The Communiqué: “A third question concerned whether national law [...] governs the determination of ‘any person’ who has ‘duly filed’ under Article 87(1) EPC. On this point, the Board concluded that the Paris Convention was the law which determines who ‘any person’ is.”
•  The Board, r.116: "The Board thus finds that the "national law" that determines who "any person" is, is in this case, the Paris Convention."
• The decision is frankly confusing by identifying the Paris Convention as "national law" (quotation marks of the Board) while at the same time deciding that "the national law does not govern who is "any person"" according to the headnote.
• The Board, r.115: “The principle of "national treatment" is that a nation treats foreigners in the same way as it treats its own nationals. In the context of the EPC this means that applicants and patentees from non-member states are treated in the same way as applicants and patentees from member states. The appellants are mistaken when they consider this principle requires the EPO to treat applicants and patentees from non-member states in the same way as they would have been treated in their home country.” 
• The Board could have added that it interprets Article 2 Paris Convention. See e.g. also the dissertation of Prof. Schaafsma here (in Dutch). Prof. Schaasma shows that the principle also means that the lex loci protectionis applies. 
• The patentees argue that the missing applicant of the US provisional application was not an inventor of the subject-matter of the PCT application and that therefore this missing applicant somehow was not part of the group of “celui qui aura régulièrement fait le dépôt”, if I understand the decision correctly.
• The difficulty with patentee's argument is that term ‘régulièrement ’ in the phrase ‘régulièrement fait le dépôt’ (duly filed an application) is typically seen as pertaining to formalities requirements for patent applications only (Article 4A(3) PC), not to entitlement (Bodenhausen, Guide, p.36, also p.40)
• The Board turns to the question whether the applicant of the first filing must be entitled to the invention, in order to obtain the priority right. The Board in r.109 cites the travaux of the Paris Convention, meeting of 9 November 1880 to conclude that the Paris Convention “does not require that the "any person" is actually legally entitled to make the filing” (r.110).
• The Board backs this up with a complex argument that "the Paris Convention [is] an integral part of US law" (r.110), because "the Board concludes that the Paris Convention is part of the "supreme Law of the Land" in the US" (r.104). The Board concludes this from interpreting the text of the US Constitution in r.104. I'm surprised that the Board considers itself to be competent to opine on Article VI, clause 2 of the US Constitution in r.104. I'm also not sure how the entire argument about the US constitution fits in with the Board's statement in the headnote that "the national law does not govern who is "any person".
• Said minutes of 9 November 1880 can be found at the WIPO website at https://tind.wipo.int/record/30008?ln=en , page 60-62 of the PDF file. It appears that a text proposal of the Belgian delegate was accepted, however as amended on a proposal by the Swedish delegate to use 'celui qui aura  régulièrement fait ' instead of 'auteur'. The matter of entitlement was indeed discussed but in a nuanced way. Interestingly enough, the Belgian delegate inquired whether the term 'régulièrement' also encompassed the entitlement, but no clear answer seems to have been given by the other delegates ("M. DEMEUR (Belgique) demande si, dans cette phrase: celui qui aura regulièrement effectué le dépot" le mot "régulièrement" porte sur le fond et sur la forme''.).
• The Board: “Article 4A(1) and (2) Paris Convention (and the basically identical Article 87(1) and (2) EPC) do not refer to the "inventor" or the "applicant" for a patent application: they refer to a person who has carried out an act, that of filing a patent application. This is immediately determinable upon the date of the filing - it is the person or persons who carried out the act of filing. " (r.108).
• As a comment, in case of filing by paper, the purely factual natural person who deposits the envelope at the EPO is typically the postman. But I'm not sure if this Board really means that the postman is awarded the priority right, or the patent attorney assistant pressing the "send" button in EPO Online Filing Software. I also note that legal persons do not carry out any physical acts so are never "the person or persons who carried out the act of filing". 
  
  
• The Board: “In the present case the appellants chose the named applicants in a way that did not comply with the well-established practice of the EPO. It is not for the Board to repair such errors, omissions or deliberate choices of a party.” (r.16).
• “As argued by the respondents [opponents], it is this action which the Paris Convention seeks to facilitate, namely, using the legal concept of priority, applicants can be treated as if they had simultaneously filed the same patent application in a multiplicity of member states of the Paris Union. In 1883, when the Paris Convention was originally adopted, (and even today), actually to file the same patent application simultaneously around the world would have presented very considerable, if not insuperable, difficulties. The provisions of the Paris Convention thus certainly assist patent applicants and facilitate the filing of patents around the world, i.e. the object and purpose of the Paris Convention as acknowledged by all parties. The legal fiction of simultaneous filing establishes both substantive (same invention), and formal (same applicants) requirements for a priority right to be acknowledged.” (r.50)
• Summarizing priority as a "legal fiction of simultaneous filing" patent applications in multiple countries is a bit of a simplification in my view. For instance, the 20-year patent term does not run from the priority date. Which might be one of the main reasons for using priority in the first place, instead of filing a PCT application straightaway. 

EPO Headnote

i) The board is empowered to and must assess the validity of a priority right claim as required by Article 87(1) EPC,
ii) the board's interpretation of the expression "any person" in Article 87(1) EPC confirms the long-established "all applicants" or the "same applicants" approach,
iii) the national law does not govern who is "any person" as per Article 87(1) EPC, the Paris Convention determines who "any person" is.

EPO T 0844/18 - link

OD decision discussed here, OD decision text here.

decision text omitted