Key points
- Technical Board 3.3.04 referred questions to the Enlarged Board regarding the entitlement to priority.
- There is a single decision to refer question, taken in consolidated proceedings T2719/19 and T1513/17 (see Art.10(2) RPBA 2020), such that referral is assigned the references G1/22 and G2/22 *. Case T2719/19 is about the pending application EP3056218 (16160321.2), T1513/17 is about granted patent EP1755674 (05779924.9), being the parent of EP'218.
- * = for the case numbers, see https://www.epo.org/law-practice/case-law-appeals/communications/2022/20220201.html
The case at hand- “The priority application was filed [in 2004, as a US provisional application] in the name of R.P. Rother, H. Wang and Z. Zhong, the inventors. The PCT application names R.P. Rother, H. Wang and Z. Zhong as inventors and as applicants with designation for the United States of America (US) only. It also names as applicants Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated States except the US.”
- “The opposition division held, as far as presently relevant, the following. ... An assignment of the priority rights of the inventors Wang and Zhong to the appellant or the University of Western Ontario had not taken place prior to the filing of the PCT application.” The priority was held invalid and the claims were held thus to lack novelty over publication D20.
- The Board considers the request for correction under Rule 139 of the PCT request form, because “the board agrees with the respondents [opponents] that the form correctly expresses what was actually intended at the time of filing of the PCT application, namely that the applicants for all Designated States other than the United States of America were the appellant and the University of Western Ontario.”
No legal basis for the PCT Request approach? - The applicant/patentee argues that priority is valid based on the argument that: “it is sufficient that all the inventors, named as applicants of the priority application, are among the applicants of the later PCT application, even if for the designation US only. ”
- The Board calls this the "PCT joint applicants approach" but acknowledges that the terminology is tricky. If the inventors are joint applicants, then probably the argument has some force, but as can be seen below, the Board considers that the inventors are not joint applicants in any relevant sense.
- “The board is further aware that the approach has been followed in a number of cases before opposition divisions, whether or not referring to the Notice from the European Patent Office concerning the requirements to be observed when filing an international application with the EPO as a PCT receiving Office, OJ 2014, A33, III, 9 ” [ case numbers can be found in the decision]
- I could add that I recall an EPO lawyer participating in a panel session of the AIPPI Congress 2021 also indicating that this was the practice of the first instance departments yet to be considered by the Boards of Appeal.
- The Board: “The issue therefore concerns a point of law of fundamental importance relevant to a number of cases at present pending before opposition divisions and boards of appeal. Although legal requirements for patent applications in the US have changed, thus leading to a reduction in the number of cases in which the facts are similar to those in the present case in the future, the issue will remain of major importance for many years to come. In addition, the answer to the question of whether the PCT joint applicants approach can be accepted as suggested by the appellant is not clear cut.”
- The Board does not see legal basis for the PCT joint applicant's approach per see: “Neither Article 11(3) PCT nor Article 153(2) EPC provide that PCT applicants for a different territory - in the present case the inventors as applicants for the United States - shall be regarded as applicants for all other designated territories as well. On the contrary, the possibility of designating different applicants for different designated States (see PCT Regulation Article 4.5(d)) must necessarily mean that the status as an applicant is limited to the designated territories. Article 118 EPC can therefore in the opinion of the board not be applied to the present situation.”
- “[It was] argued that a PCT joint applicants approach can be based on the unitary character of the priority right in the PCT and thus on the operation of the PCT alone. The board cannot see merit in this argument either. The PCT does not create rules of its own regarding the effect of a priority claim but refers to Article 4 of the Paris Convention (Article 8(2)(a) PCT).”
Transfer by implicit agreement - The patentee also submits a different legal basis, which I briefly summarize as that the manner of filing the PCT application at hand is a presumption of a tacit transfer of the priority right from the inventors to the relevant PCT applicant, with the additional argument that such a tacit transfer is permitted under the applicable law, the applicable law being the EPC itself. For the latter point, the patentee refers to the judgement of the Court of Appeal (CoA) of The Hague in the case Biogen/Genentech v. Celltrion (Gerechtshof Den Haag 30 July 2019; informal translation in my earlier post here.
- The Board, after summarizing the reasoning of the CoA The Hague: “This approach seems appealing as it provides for a harmonised and well-founded assessment of an alleged transfer of the priority right. However, an issue with this approach lies in the uncertainty regarding the legal system that is applicable to the assessment of the transfer of the priority right: in several decisions of the boards of appeal, the legal requirements for the transfer of the priority right by agreement have been assessed applying national law. In spite of this, it is far from clear that this is correct, as the EPC does not contain any conflict of laws-rules and this issue has so far not been addressed by the EBA. A separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed.”
- The Board: “Were the EBA to share the view of the CoA [The Hague] that the legal system to be applied to assess the priority right is solely the EPC, then it seems that the EPC does not, in Article 87 EPC or elsewhere, impose any formal requirements for the transfer of the priority right by agreement []. In that case it could be argued that the mutual filing of a PCT application [...] demonstrates - absent indications to the contrary - the existence of an implicit agreement between party A and party B, conferring on party B the right to benefit from the priority for the EPC territory. This implicit agreement could possibly be sufficient to bring about the transfer of the priority right to party B for the EPC territory.”
The jurisdiction issue (first question) - The Board then adds for good measure as a preliminary question essentially whether the EPO is competent to examine the entitlement to priority at all because, even though T844/18 Crispr said "yes", the Board is receptive to the argument of the parties that, if questions regarding priority are to be referred to the EBA on a related matter, this is a convenient opportunity to have a final decision on the "jurisdiction issue" as well.
Second question - Turning to the second question, the Board essentially presents the relevant facts and then asks if the priority is valid.
"The following questions are referred to the Enlarged Board of Appeal:
I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
II. If question I is answered in the affirmative
Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC
in the case where
1) a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
2) the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
3) the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?"
Reasons for the Decision
Admissibility of the appeal in case T 1513/17
1. The request by respondent II to hold the appeal in case T 1513/17 inadmissible is based on the argument that the appellant did not address the grounds on which the decision under appeal was based, in this case lack of novelty and inventive step, but that the appellant's submissions were only concerned with the validity of the priority right. Therefore, they could not overcome the decision to revoke the patent.
2. This reasoning is not persuasive. The statement of grounds of appeal should enable the respondents and the board to understand why, in the appellant's view, the appealed decision should be set aside. This is the case here. In the proceedings before the opposition division, respondent II argued that documents D20 and D21 were available as prior art for assessing novelty and inventive step because the patent was not entitled to priority. The opposition division in the decision under appeal denied the right to priority and consequently considered documents D20 and D21 to be novelty destroying. There can therefore be no misunderstanding that the appellant requests the decision on the entitlement to priority be reconsidered and as a consequence of this also the decision on the novelty of the subject-matter of claim 1 of the main request and of auxiliary request 2.
3. The appeal in case T 1513/17 therefore complies with Articles 106 to 108 and Rule 99 EPC and is admissible. The appeal in case T 2719/19 is admissible for the same reasons.
The request for correction pursuant to Rule 139 EPC in case T 1513/17
4. The request for correction is conditional on the validity of the priority claim being not acknowledged. However, since a decision on the validity of the priority claim requires guidance of the Enlarged Board of Appeal (EBA) as explained below, the board already at this stage has to assess whether the requested correction is allowable. If this were the case, no referral in case T 1513/17 would be needed to decide on the appeal.
5. The board understands that the requested correction concerns the designation of the applicants for all Designated States except the United States of America, in form PCT/RO/101 which should be corrected to be the appellant, Alexion Pharamaceuticals, Inc., H. Wang and Z. Zhong.
6. In decision G 1/12 it is explained that Rule 139, first sentence, EPC deals with cases in which an error of expression in a declaration occurred (reasons 34). The EBA endorses case law requiring that the correction must introduce what was originally intended. It cannot be used to enable a person to give effect to a change of mind or development of plans. It is the party's actual intention which must be considered (reasons 37).
7. In the present case, this requirement is not fulfilled. The board agrees with the respondents that the form correctly expresses what was actually intended at the time of filing of the PCT application, namely that the applicants for all Designated States other than the United States of America were the appellant and the University of Western Ontario. The appellant's in-house counsel has confirmed this intention in his declaration (document D54). This intention was indeed based on the incorrect impression that Mr Wang and Mr Zhong had assigned their rights in the invention to the university under their employment contract.
8. The in-house counsel has also stated in his declaration that he intended to name the correct parties. This latter statement is not referring to an error of expression in form PCT/RO/101 but rather to the underlying motives for this expression. However, these motives are not relevant for the application of Rule 139 EPC. Respondent I correctly argued that if a party's intention to take the correct action would be relevant, this would open the door to unlimited possibilities for correction, to the detriment of legal certainty. Such an approach would certainly also be at odds with the principles expressed in decision G 1/12.
9. The decisions cited by the appellant (J 7/80, J 18/93 and J 19/96) need not to be discussed in detail. They either do not support the appellant's view that Rule 139 EPC does not exclude the correction of the designation of the applicant to a person/legal entity who/which at the date of filing of the patent application was not intended to be designated as applicant or, if they do, these decisions have been superseded by the later decision of the EBA. In view of the foregoing conclusion, it is also not necessary to address the question of whether form PCT/RO/101 can be corrected at all.
Admittance of the alleged new request and related submissions of fact in case T 1513/17
10. In the present case, the statement of grounds of appeal was filed before 1 January 2020 and the replies thereto were filed in due time. Thus, in view of Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply, but instead Article 12(4) RPBA 2007 applies to both the grounds of appeal and the replies.
11. The appellant has argued for the first time in appeal proceedings that the priority is validly claimed, even if the requested correction would not be allowed. The appellant takes the view that in a case like this it is sufficient that all the inventors, named as applicants of the priority application, are among the applicants of the later PCT application, even if for the designation US only. The priority right-owning applicants thus introduced the priority right into the PCT application with full effect for that application as a whole. As the board understands it, the appellant bases this "joint applicants approach" in particular on Article 11(3) PCT and Articles 118 and 153(2) EPC.
12. This line of argument is not based on any new facts or evidence, but represents a fresh legal view. Neither does this line of argument, as was argued by respondent II, involve a new request to recognise the priority right as valid even without the correction. It is merely another argument why the claimed priority is valid and the claimed subject-matter is novel. The board therefore sees no reason nor power on the basis of Article 12(4) RPBA 2007 to hold the line of argument inadmissible.
Third party observations received on 14 January 2022 and 25 January 2022 for both cases
13. These observations concerning the priority issue were received after the debate had been closed at the conclusion of the oral proceedings in the consolidated cases. The board decided not to take their contents into account in the present proceedings.
The joint applicants approach in both cases
14. In view of the foregoing the assessment of the so-called "joint applicants approach" is decisive for the decision in both cases.
15. The "joint applicants approach" concerns, in the most simple case, the situation where a party A is applicant for the priority application and parties A and B are applicants for the subsequent application in which the priority right is invoked. Party B can now benefit from the priority right to which their co-applicant party A is entitled. A separate transfer of the priority right to party B is not needed.
16. The joint applicants approach has been been developed in the case law of the Boards of Appeal, see decision T 1933/12, reasons 2.4. See also the Guidelines for Examination in the European Patent Office A-III 6.1. As far as the board is aware, this approach to European patent applications has never been contested by any interested party.
17. The appellant essentially argues that the joint applicants approach, which is applicable to European patent applications, should also apply to PCT patent applications. To distinguish the factual situation from the one that concerns a European patent application, the present situation could be referred to as the "PCT joint applicants approach".
18. A further distinction is noted here to avoid confusion about terminology concerning the factual situation underlying for example the CRISPR-Cas case, T 844/18. As apparent from the written reasons for the decision in this case priority was denied based on an extensive analysis of the relevant facts and law. It was decisive that the priority claim failed to meet the requirement that all applicants of the priority application must also be applicants of the subsequent PCT application for which the priority is claimed (the "all applicants approach").
19. As to the merits of the appellant's line of argument in the present case, the board is aware of several appeal cases in which the PCT joint applicants approach is (or has been) a disputed concept. The board refers for example to communications issued by the boards in cases T 2749/18, T 2842/18, T 1837/19 and T 845/19. The board is further aware that the approach has been followed in a number of cases before opposition divisions, whether or not referring to the Notice from the European Patent Office concerning the requirements to be observed when filing an international application with the EPO as a PCT receiving Office, OJ 2014, A33, III, 9 (see for example documents A2 to A7, filed by the appellant). The issue therefore concerns a point of law of fundamental importance relevant to a number of cases at present pending before opposition divisions and boards of appeal. Although legal requirements for patent applications in the US have changed, thus leading to a reduction in the number of cases in which the facts are similar to those in the present case in the future, the issue will remain of major importance for many years to come. In addition, the answer to the question of whether the PCT joint applicants approach can be accepted as suggested by the appellant is not clear cut. The board therefore finds it appropriate to refer a question concerning the PCT joint applicants approach to the EBA, as requested by all parties.
Questions to be referred as formulated by the parties
20. The appellant has requested that the following questions be referred to the EBA:
i) When acting as a designated or elected office under Art 153 EPC, does the EPO have the jurisdiction to examine the entitlement to and/or the formal validity of a priority claim, as opposed to substantive issues of priority? If no, what is the appropriate legal forum in which a priority claim can be challenged on formal grounds? If yes:
ii) When acting as a designated or elected office under Art 153 EPC and assessing the entitlement to priority of a Euro-PCT application which claims priority from a first application filed in a member state of the Paris Convention, under which legal framework should the EPO assess priority entitlement (a) if said member state of the Paris Convention is not an EPC contracting state, and (b) if it is?
iii) Provided all of the applicants for a priority application are applicants for a PCT application, can priority rights be established by the naming of a joint applicant for the PCT application who is not a joint applicant for the PCT application's EPO designation (the "joint applicants approach")?
21. Respondent I requested that the following questions be referred to the EBA:
iv) When acting as a designated or elected office under Art. 153 EPC in respect of a PCT application, is the EPO competent to determine who is "successor in title" under Art. 87(1) EPC when a first (priority) application was filed in the name(s) of the inventor(s)? If, yes;
v) Provided all of the applicants for a priority application are applicants for a PCT application, can priority rights under Art. 87(1) EPC be established by the naming of a joint applicant for the PCT application who is not a joint applicant for the PCT application's EPO designation (the "joint applicants approach")?
vi) Can a person with no substantiated ownership interest in the priority right derived from a priority application challenge a patentee's status as successor in title to the priority rights derived from that application?
22. Respondent II requested that the following questions be referred to the EBA:
vii) In the case a first application was filed by a plurality of applicants and a subsequent PCT application was filed by the same applicants or successors in title, is a transfer of the right to priority required for the Euro-PCT application in order to be entitled to the priority of the first application, if not all of the applicants of the PCT application are applicants for EP?
viii) In the case a first application was filed by an applicant and a subsequent PCT application was filed by a plurality of applicants or successors in title including the applicant of the priority application, is a transfer of the right to priority required for the Euro-PCT application in order to be entitled to the priority of the first application, if the applicant of the first application is not applicant for EP?
ix) If the answer to question (1) or (2) is no, are there any requirements to be fulfilled other than that the applications were effectively and timely filed and the requirements of Rules 52 and 53 EPC are met?
x) If the answer to question (1) or (2) is yes, are there any possibilities for substituting the formal proof of transfer of the right to priority within the priority year?
23. Respondent II supported the requests of the appellant and respondent I that the questions to the EBA should include a question regarding the jurisdiction of the EPO to decide on the entitlement to the priority right, but did not formulate a particular question in this respect.
24. The jurisdiction of the EPO to decide on the entitlement to the priority right has been addressed extensively in the CRISPR-Cas case, T 844/18. The core of the decision on this point can be found in point 18 where it is reasoned that there is no legal basis to relieve the EPO from the obligation to assess who has performed the act of filing the patent application as required by Article 87(1) EPC. The board in the present composition is inclined to agree with this conclusion. It is also rightly pointed out in decision T 844/18 that "The bar to overturning long established case law and practice should be very high because of the disruptive effects a change may have" (see point 86). Although this remark concerned the application of the "all applicants approach", the same applies to the standing practise of the boards of appeal to decide on the priority rights in general, including the entitlement to the priority right.
25. In the present case, the jurisdiction of the boards to decide on the entitlement to the priority right had not been explicitly questioned during the written proceedings. Indeed, none of the parties presented arguments in their written submissions why the present standing practise is incorrect or why the reasoning in, for example decision T 844/18, is incorrect other than a reference to decision J 11/95 made by respondent I. This latter decision mentions the issue only in obiter and provides no reasons for the approach taken. It also seems to focus on the ownership of the priority invention rather than on the assessment of the priority claim. The board therefore does not find the position taken in J 11/95 a convincing argument in favour of the view that the EPO has no jurisdiction.
26. However, the jurisdiction of the EPO to decide on the entitlement to the priority right has been questioned, ex officio, in communications of the respective boards in several cases like T 239/16, T 419/16 and T 845/19 and also in commentaries (see Bremi, in Singer/Stauder/Luginbühl, EPÜ, 8. Auflage, Art. 87, Rdn 61). For example in cases T 239/16 and T 419/16 a parallel was drawn with reference to the Travaux Préparatoires between the power to determine whether a party is entitled to a particular patent application, which the EPO does not have, and the power to decide on the entitlement to the priority right. In view of the above, the issue will therefore, in spite of the decision in case T 844/18, most likely be raised again in other cases. The board is also receptive to the argument of the parties that, if questions regarding priority are to be referred to the EBA on a related matter, this is a convenient opportunity to have a final decision on the "jurisdiction issue" as well. The board therefore decides to include a question addressing the jurisdiction of the EPO to decide on the entitlement to the priority right.
27. As the further aspects of the PCT joint applicants approach are concerned (such as the status of the party that challenges the priority right or different approaches for a priority right application filed in a EPC Contracting State and for one filed in an non-EPC Contracting State), the board notes that it is appropriate to only refer questions that are relevant for the decision in a given case. These should also be specific enough to allow a clear answer that can be applied directly to the case. Questions ii, vi, ix and x as formulated by the parties (see above) are not relevant in the legal and factual framework of the present cases or need no separate answer beyond that required by the further question as formulated in the Order. Question iii, v, viii and viii address the same aspects as the question formulated by the board, be it in somewhat different wording.
Legal basis for the PCT joint applicant approach?
28. The following sets out the further considerations of the board regarding the issues raised.
29. During the oral proceedings, three possible legal bases for the PCT joint applicant approach were discussed.
30. Firstly, the appellant has argued that the joint applicants approach can be applied to the present situation, relying in particular on Article 11(3) PCT and Articles 118 and 153(2) EPC. This was because Article 11(3) PCT provides (inter alia) that the international application shall have the effect of a regular national application in each designated State. This provision is mirrored in Article 153(2) EPC. Article 118 EPC reads: "Where the applicants for or proprietors of a European patent are not the same in respect of different designated Contracting States, they shall be regarded as joint applicants or proprietors for the purposes of proceedings before the European Patent Office. The unity of the application or patent in these proceedings shall not be affected;(...) ". (The board notes that in the present case Article 118 EPC 1973 applies. This provision however is identical to that in the EPC 2000.)
31. This line of reasoning does not convince the board. The present situation, where not all of the applicants for the PCT application are applicants for a European patent, is materially different from that of a regular European application. Assuming that Article 118 EPC provides a legal basis for the joint applicants approach, then its effects are limited to the applicants of a European patent, in the present case the appellant and the University of Western Ontario. Neither Article 11(3) PCT nor Article 153(2) EPC provide that PCT applicants for a different territory - in the present case the inventors as applicants for the United States - shall be regarded as applicants for all other designated territories as well. On the contrary, the possibility of designating different applicants for different designated States (see PCT Regulation Article 4.5(d)) must necessarily mean that the status as an applicant is limited to the designated territories. Article 118 EPC can therefore in the opinion of the board not be applied to the present situation.
32. Secondly, respondent I argued that a PCT joint applicants approach can be based on the unitary character of the priority right in the PCT and thus on the operation of the PCT alone.
33. The board cannot see merit in this argument either. The PCT does not create rules of its own regarding the effect of a priority claim but refers to Article 4 of the Paris Convention (Article 8(2)(a) PCT). The validity of the PCT joint applicants approach should therefore, in the view of the board, be assessed in the light of the Paris Convention, in particular the meaning of term "successor in title", rather than the PCT.
34. The appellant furthermore submitted the judgement of the Court of Appeal (CoA) of The Hague in the case Biogen/Genentech v. Celltrion (Gerechtshof Den Haag 30 July 2019 , ECLI:NL:GHDHA:2019:1962). This decision offers a third viewpoint that could possibly lead to the conclusion that the PCT joint applicants approach should be acknowledged.
35. The case concerned the validity of a priority claim invoked by Biogen in a PCT application on the basis of a priority application filed by two other parties. It was argued that the right to priority had been assigned to Biogen. It was undisputed between the parties that the validity of the assignment had to be assessed according the law of Massachusetts.
36. The CoA disagreed. It reasoned in essence that the lex loci protectionis was applicable to the right to priority because according to Article 2(1) of the Paris Convention, the requirements for granting and nullification of patents in a particular country were determined in accordance with the national law and the right to priority was part of such requirements. In case of a European patent which was granted on a PCT application the lex loci proctectionis was the EPC. The EPC did not require particular formalities for assignment of the right to priority. Proof of an agreement of assignment of the right to priority sufficed. In the case before the Dutch court, such an agreement was part of an "Employee Proprietary Information and Inventions and Dispute Resolution Agreement".
37. This approach seems appealing as it provides for a harmonised and well founded assessment of an alleged transfer of the priority right. However, an issue with this approach lies in the uncertainty regarding the legal system that is applicable to the assessment of the transfer of the priority right: in several decisions of the boards of appeal, the legal requirements for the transfer of the priority right by agreement have been assessed applying national law. In spite of this, it is far from clear that this is correct, as the EPC does not contain any conflict of laws-rules and this issue has so far not been addressed by the EBA. A separate question relating to conflict of laws-rules to be applied to a transfer of the priority right is nonetheless not necessary because it is inherently contained in the questions posed and it will be addressed in the considerations of the EBA, as needed.
38. Were the EBA to share the view of the CoA that the legal system to be applied to assess the priority right is solely the EPC, then it seems that the EPC does not, in Article 87 EPC or elsewhere, impose any formal requirements for the transfer of the priority right by agreement (see also decisions T 1201/14, reasons 3.2.1 and T 205/14, reasons 3.6.2 and 3.6.3, dealing with the same issue). In that case it could be argued that the mutual filing of a PCT application by parties A and B, wherein party B is named as the applicant for the EPC territory and party A (who is entitled to the priority right) is named as the applicant for the US, demonstrates - absent indications to the contrary - the existence of an implicit agreement between party A and party B, conferring on party B the right to benefit from the priority for the EPC territory. This implicit agreement could possibly be sufficient to bring about the transfer of the priority right to party B for the EPC territory.
39. On the other hand, in case a particular national legal system were applicable, then a priority right could still be considered validly transferred to party B if the applicable system does not require any formalities either.
40. Respondent II referred the board to the judgment of the Bundesgerichtshof (BGH) of 16 April 2013 in case X ZR 49/12 (Fahrzeugscheibe) which reflects a similar line of thinking as far as the implicit agreement to transfer the priority right is concerned. The case concerned the validity of the German part of a European patent that claimed priority of a national German patent application, filed by a company within the same group of companies as the patent proprietor. The patent proprietor argued that the priority had been properly transferred as a result of a research and development agreement between the companies. The BGH held (1) that the transfer of the priority right is a matter of the applicable German conflict of laws-rule, in this case, at the time of transfer, Article 33 (2) EGBGB (Einführungsgesetz zum Bürgerlichen Gesetzbuch; translation: Introductory Act to the Civil Code) (until 17 December 2009; later: Article 14(2) Rome I Regulation). It then held (2) that in accordance with the applicable conflict of laws-rule German national law applied to the transfer of the priority right as the law applicable to the priority application and (3) that German law did not require any particular formalities for the transfer. After having further established that Article 87 EPC does not require such formalities either, the court then assessed the facts of the case that led it to the conclusion that the there was an implied agreement ("konkludente Einigung") between the parties to transfer the priority right to the applicant, which was sufficient to acknowledge priority for the European patent.
41. Less illustrative for this approach, but supporting the view that the PCT application could be regarded as proof of an agreement to transfer the priority right is the UK judgment KCI Licensing Inc and others v. Smith & Nephew PLC and others (case HC09C02624) of 23 June 2010, which respondent I has referred to in their submissions. In this case, two European patents claimed priority from a US patent application, filed by the inventor. The subsequent PCT application designated the inventor as the applicant for the US, the proprietor of the subsequent European patents KC Inc as applicant for all designated States except the US and a subsidiary of said proprietor of the patents, Mediscus, as applicant for "GB only". It was concluded that KC Inc had the right to claim priority and that Mediscus was not a co-applicant in respect of the PCT application in so far as it related to the European patents. However, even if Mediscus had to be considered a co-applicant, this would not adversely affect the claim to priority, although there was no evidence of any assignment of the priority right from KC Inc to Mediscus. The reason for this was the implied agreement which could be inferred from the PCT application. The judgment at paragraph 98 states: "Counsel for KCI accepted that he could not point to any written assignment, or even an oral agreement, but argued that the correct inference to be drawn from the circumstances surrounding the filing of the PCT Application was that KC Inc had agreed by conduct to transfer part of its interest in the invention to its subsidiary Mediscus. He submitted that this was sufficient to make Mediscus a successor in title for the purposes of claiming priority, and that no greater degree of formality was required. I accept that submission." Although this reasoning is an obiter dictum, it does indeed, as respondent I argued, support the qualification, in certain circumstances, of the PCT application as an instrument of transfer of the priority right.
42. In view of all the foregoing, guidance on the priority issue is needed to come to a decision in the present cases.
43. In the following questions reference to "party A" and "party B" is done for ease of understanding and is not intended to as limiting the considerations to scenarios involving only two parties.
Order
For these reasons it is decided that:
The following questions are referred to the Enlarged Board of Appeal:
I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
II. If question I is answered in the affirmative
Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC
in the case where
1) a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
2) the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
3) the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
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