G 1/22 - Entitlement to priority (preliminary post)

Key points

• In a well-written decision, the Enlarged Board, in practical terms, prevents opponents in general from attacking the validity of the priority of a patent based on an alleged lack of entitlement of the application to the priority right on the filing date of the patent, by creating a strong but rebuttable presumption that the applicant is entitled to the priority right if priority is claimed in accordance with the formal requirements of Article 88 EPC. This presumption is based on the observation that the subsequent patent application is usually filed when the priority application is still secret and that priority documents are normally only issued to the applicant. Hence, a party being able to file the patent application with the right text and being able to file a priority document can be presumed to have some connection to the applicants of the priority application. 
• Moreover, the priority right can be assigned by an implied agreement, and the assignment does not need to be in writing or signed by the parties. This applies to all priority rights that are claimed for the benefit of subsequent European patent applications, hence also if the priority application is, e.g., a US provisional application. National law is not to be used (with a minor exception); the Enlarged Board thereby departs from the until now prevailing case law of the Technical Boards of Appeal. 
• Very interestingly, the Enlarged Board arrives at this rule by deciding that the validity of a transfer of a priority right, in terms of formal conditions, must be determined according to the EPC as autonomous law.
• The Enlarged Board confirms that the EPO is competent, i.e. has jurisdiction to assess the entitlement to the priority right. The right of Art. 87(1) EPC is a distinct right from the entitlement to the European patent application of Art.60(1) and Art. 60(3) EPC.
• I aim to provide a more extensive analysis of the decision in due time. 
• To make this post not too boring: can it be concluded that T 62/05 was not wrong after all in point 3.7? (though the TBA in that case was too strict in r.3.8-3.9; but note that the TBA did consider the alleged implicit and tacit transfer of rights in r.3.12).
• Stay tuned!

EPO 

The link to the decision is provided after the jump.

PDF version with bookmarks and selectable text: 

https://link.epo.org/web/case-law-appeals/Communications/G1_22-G%202_22-Decision-of-the-EBA-of-10-October-2023.pdf

https://www.epo.org/en/boards-of-appeal/decisions/g220001ex1