T 2431/17 - Transfer of priority right

 Key points

• “The applicants of the priority applications D15 and D16 [two US provisional applications filed in the name of the inventors] are not identical to the applicant of the Euro-PCT application from which the patent in suit derives”. The PCT applicant is the company ARL.
• The Board: “The question arises as to whether ARL is in fact the successor in title of the original applicants of D15 and D16. This formal requirement of Article 87(1) EPC must be assessed by the EPO, for the reasons set out in T 844/18”
• ”If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority”.
• The Board: “the burden of proof is on appellant [patentee] to establish that: (a) before the date of filing of the application  [] (b) the right of priority derived from the US provisional application D15 had been transferred to it (c) by the six original applicants and inventors (d) in accordance with the requirements of the relevant law.”
• Patentee submitted that each of the inventors had an employment contract with AUL (a different but related legal entity) and then, turning to a highly fact-specific circumstance,  refers to a license agreement between it and a third entity which stated that that third entity had “"has acquired and assumed the economic benefits and burdens with respect to [AUL's] intellectual property ownership"”
• As a comment, there is a small risk when putting IP rights in a separate legal entity (typically for legal, tax or financial reasons), namely that the chain of title between the operating company being the employer and the IP holing entity becomes complex and not always carefully maintained and updated by the legal department.
• The employer company was not actually a signatory to that licence agreement and the phrase “has acquired and assumed the economic benefits and burdens” does not clearly refer to prospective rights.
• The Board acknowledges the future assignment of priority rights in the employment contract as valid (r.1.5.5, third para) which is highly useful for practice.
• The mere fact that ARL was the PCT applicant, does not demonstrate the transfer of priority rights, according to the Board. “Finally, the Board does not share the opinion of appellant P that the fact that ARL went on to file the PCT application showed, on the balance of probabilities, that they were the rightful applicant. The fact that ARL filed a PCT application pertaining to the invention of D15 shows that it had knowledge of this invention, but it does not demonstrate that it had formally acquired the right to claim priority from D15 before filing the PCT application.”

T 2431/17 

https://www.epo.org/law-practice/case-law-appeals/recent/t172431eu1.html

1.5 Priority

1.5.1 The patent claims priority from the applications D15 (US 61/037117) and D16 (US 61/111920). The validity of this priority claim is relevant to the determination of patentability for the claimed invention over A045 and A049.

1.5.2 Under Article 87(1) EPC, the right of priority belongs to the person who has duly filed D15 and D16 or his successor in title.

The applicants of the priority applications D15 and D16 are not identical to the applicant of the Euro-PCT application from which the patent in suit derives (European patent application number 09722278.0, filed under the PCT as PCT/US2009/037077, hereinafter "the application"):

- Alcon Research, Ltd. (hereinafter ARL) is the applicant of the application (and the patent proprietor, i.e. appellant P), whereas

- the applicants of D15 are Kabra, Jani, Gan, Bhagat, Chowhan and Dahlin, and

- the applicants of D16 are Bhagat, Carreras, Chowhan, Cuchi, Dahlin, Galán, Gan, García, González, Jani, Jiménez, Kabra and Martínez.

The question arises as to whether ARL is in fact the successor in title of the original applicants of D15 and D16. This formal requirement of Article 87(1) EPC must be assessed by the EPO, for the reasons set out in T 844/18 (see points 11-24 of the reasons).

1.5.3 If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority (cf. J 19/87, Facts, point VIII; T 1008/96, Reasons, point 3.3; T 577/11, Reasons, point 6.1; T 205/14, Reasons, point 3.5; and T 517/14, Reasons, point 2.6).

Here, appellant P only seeks to rely on a right of priority from D15. Consequently, the burden of proof is on appellant P to establish that:

(a) before the date of filing of the application (i.e. 13 March 2009),

(b) the right of priority derived from the US provisional application D15 had been transferred to it

(c) by the six original applicants and inventors

(d) in accordance with the requirements of the relevant law.

1.5.4 Appellant P did not produce any direct assignment of the right to priority for each of the six inventors of D15 to ARL. Rather, appellant P relies on the following "chain of title" to establish that it is the successor in title of the right to priority from D15:

(a) each of the six inventors of D15 signed in 2000 an employment contract with ARL wherein the inventor (employee) assigns to Alcon Universal Ltd. (hereinafter AUL) the rights to inventions "heretofore or hereinafter conceived" (see A050-A055);

(b) in 2001, AUL changed its name into Alcon Inc (hereinafter AI) (see A056);

(c) on 1 January 2008, i.e. shortly before the filing of the priority application D15, ARL entered into a licence agreement (see A057) with Alcon International SA (hereinafter AISA). This licence agreement states that AISA "has acquired and assumed the economic benefits and burdens with respect to AI's intellectual property ownership" (see page 1). The licence agreement further provides that any future discoveries (see paragraph 2.3 of A057) "shall be the sole and exclusive property of the appropriate R&D Principal(s) funding such Discoveries". According to appellant P, there were no reasons to doubt that ARL was the R&D Principal in this case.

To further support this alleged "chain of title", appellant P filed Mr Taylor's declaration A058. The declaration states that "if ARL funded the Discoveries disclosed in [D15] and those Discoveries were developed or acquired as a result of activities conducted pursuant to the agreement [i.e. A057], then on the date [D15] was filed, any rights to claim priority therefrom otherwise owned by AISA (for example, by virtue of its acquisition and assumption of the economic benefits and burdens with respect to [AI]'s Intellectual Property ownership (as "Intellectual Property" is defined in the agreement)) were immediately transferred to ARL pursuant to the terms of the agreement."

1.5.5 In the opposition proceedings relating to the divisional case EP 3 042 646, the opposition division found this alleged "chain of title" unconvincing (see the grounds for the decision A048 in this divisional case, point 5.4.4-5.4.6).

The Board shares the opinion of the opposition division set out in A048 that the succession in title has not been credibly established, for the following reasons.

The six inventors of D15 had signed, in 2000, the employment contracts A050-A055, which assign to AUL their rights in respect of invention to be conceived thereafter. AUL then became AI in 2001. As a result, when the right to priority from D15 came into existence at the time of its filling, namely on 17 March 2008, this right was automatically assigned to AI.

However, as acknowledged by appellant P (see letter of 31 December 2019, paragraph (45)), and as noted in the decision A048 (see paragraph 5.4.4), there is no evidence in A057 that this right to the priority from D15 was then transferred to AISA. The right to priority from D15 only came into existence after A057 was executed. Hence, the statement in A057 that AISA had acquired and assumed the economic benefits and burdens with respect to AI's intellectual property ownership does not cover the priority from D15. There is no support either in A057 for appellant P's assertion that this transfer of ownership would include the prospective ownership of any IP rights arising from inventions (later) conceived or developed by the 6 named inventors.

1.5.6 Accordingly, appellant P's case rest solely on paragraph 2.3 of A057, which provides that any future discoveries "shall be the sole and exclusive property of the appropriate R&D Principal(s) funding such Discoveries", which R&D Principal would in the present case be ARL according to appellant P.

However, even if ARL were considered to be the "R&D Principal(s)" funding the discoveries to which D15 pertains, the later provision of A057 assigning the property of these discoveries to ARL is contradicted by the earlier employment contracts assigning this property to AI.

The Board cannot follow appellant P's argument that the agreement A057 of 2008 between AISA and ARL would supersede the employment contracts of 2000 or change the position for future rights, because neither the inventors of D15 nor AUL/AI are party to the agreement A057. There is no evidence that the rights deriving from D15 had been acquired directly by ARL or by AISA for it to assign them to ARL.

1.5.7 Finally, the Board does not share the opinion of appellant P that the fact that ARL went on to file the PCT application showed, on the balance of probabilities, that they were the rightful applicant. The fact that ARL filed a PCT application pertaining to the invention of D15 shows that it had knowledge of this invention, but it does not demonstrate that it had formally acquired the right to claim priority from D15 before filing the PCT application.

1.5.8 Accordingly, the Board finds that the transfer of the right of priority from D15 to ARL has not been demonstrated. The Board adds that appellant P's chain of title falls short of a proper demonstration even using the normal standard of proof of the "balance of probabilities". Consequently, the question as to whether a stricter standard of proof is required to establish the applicant's right to claim priority as "successor in title" within the meaning of Article 87(1) EPC is not relevant to the present case. Accordingly, a referral to the Enlarged Board of Appeal regarding this question needs not be considered.

1.5.9 In conclusion, the priority from D15 is not validly claimed. This finding also applies to the priority from D16, since appellant P did not submit any evidence regarding the transfer of the right of priority deriving from this document.