T 0521/18 - G1/22 for Art.54(3)

Key points

• D4 (WO 2004/069849)  is a prior right under Art. 54(3) if the priority is valid (it entered the EP phase as EP04706051.2) 
• "The opposition division held that document D4 which was filed in the name of 454 Corporation (designated for the States outside the US) and 10 inventors/applicants (designated for the US only), was entitled to priority from application P4 (D4a), which had been filed in the name of 7 inventors/applicants out of the 10 inventors/applicants of document D4"
•  "As regards the question of priority entitlement of document D4, decisions G 1/22 and G 2/22 have set out that under the EPC normally a strong presumption exists that the priority applicants accept the subsequent applicant's reliance on the priority right for the purposes of Article 88(1) EPC (see Reasons 105 to 107). This strong presumption also applies in a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant. The joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary"
• "[The] presumption can only be rebutted in the presence of "serious" doubts based on facts or clear indications to the contrary"
• " documents D12 to D14 [filed by the proprietor] do not cast any such doubts on the presumption of an assignment. These documents are LinkedIn profiles of three further inventors [...] of application P4 (D4a) that show that they are employed by Roche, i.e. the company that bought 454 Corporation in 2007. Documents D12 to D14 are irrelevant to the question whether there was an agreement between the parties named as applicant in P4 (D4a) and those named as applicant in document D4, allowing the latter to rely on the priority right established by the filing of P4 (D4a). In particular documents D12 to D14 contain no evidence concerning a transfer of rights, be it in favour or against it."
• The evidence based on documents D12 to D14 and D15 to D17 therefore raises speculative doubts on unspecific facts only. This evidence is not suitable to rebut the strong presumption on entitlement as also confirmed by the declarations of two inventors of document D4, [Mr. X1] (see document D10, point 5) and [Mr. X2] (see document D11, point 5).
• Consequently document D4 is entitled to priority from application P4 (D4a) and thus forms prior art for the patent at least according to Article 54(3) EPC.
• Lack of novelty over D4 was not disputed.
• 
  

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t180521eu1

Main request

Novelty

1. The opposition division held that document D4 which was filed in the name of 454 Corporation (designated for the States outside the US) and 10 inventors/applicants (designated for the US only), was entitled to priority from application P4 (D4a), which had been filed in the name of 7 inventors/applicants out of the 10 inventors/applicants of document D4 (see decision under appeal, points 21.1 to 21.7). Furthermore, the opposition division held that the subject-matter of claims 1 and 5 of auxiliary request 3 (now main request) lacked novelty over the disclosure of document D4 (see decision under appeal, points 22.1 to 22.3).

2. The board agrees with these findings with regard to both the priority entitlement of document D4 and the lack of novelty of claims 1 and 5 of the present main request.

2.1 As regards the question of priority entitlement of document D4, decisions G 1/22 and G 2/22 have set out that under the EPC normally a strong presumption exists that the priority applicants accept the subsequent applicant's reliance on the priority right for the purposes of Article 88(1) EPC (see Reasons 105 to 107). This strong presumption also applies in a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant. The joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary (see Order II. of G 1/22 and G 2/22).

2.2 This strong presumption applies in the present case, which corresponds to the situation referred to in Order II. of G 1/22 and G 2/22.

2.3 Such a presumption can only be rebutted in the presence of "serious" doubts based on facts or clear indications to the contrary (see G 1/22 and G 2/22, Reasons 110 and 125). The appellant filed documents D12 to D14 to cast doubts that a valid priority transfer took place from the inventors to 454 Corporation.

2.4 However, documents D12 to D14 do not cast any such doubts on the presumption of an assignment. These documents are LinkedIn profiles of three further inventors [...] of application P4 (D4a) that show that they are employed by Roche, i.e. the company that bought 454 Corporation in 2007. Documents D12 to D14 are irrelevant to the question whether there was an agreement between the parties named as applicant in P4 (D4a) and those named as applicant in document D4, allowing the latter to rely on the priority right established by the filing of P4 (D4a). In particular documents D12 to D14 contain no evidence concerning a transfer of rights, be it in favour or against it. Nor do these documents provide evidence that Roche as their employer has access to employment contracts previously signed with a different company, i.e. 454 Corporation. The same considerations are valid for the further publications indicating that some of the present inventors were employed by Roche at a much later point in time, namely in 2017 (see documents D15 to D17).

2.5 The evidence based on documents D12 to D14 and D15 to D17 therefore raises speculative doubts on unspecific facts only. This evidence is not suitable to rebut the strong presumption on entitlement as also confirmed by the declarations of two inventors of document D4, [...] (see document D11, point 5).

2.6 For these reasons, and with regard to respondent II's request of non-admittance, there is no need to consider documents D12 to D14 in these appeal proceedings.

2.7 Further, the appellant requested not to admit/consider documents D18 and D19 in these appeal proceedings. The board sees likewise no need to consider document D18 (a further inventor declaration of document D4), and document D19, the first priority application ("P1") of document D4 apparently showing that 454 Corporation was an assignee of the right. Both documents would at most support a presumption of entitlement of priority, for which there is no doubt in the present case.

3. Consequently document D4 is entitled to priority from application P4 (D4a) and thus forms prior art for the patent at least according to Article 54(3) EPC.

4. In view of the board's conclusion on document D4's valid priority, respondent II's objection to the validity of the priority claimed by the patent in suit (see reply, points 6.15 to 6.17) needs not be addressed.

5. The appellant has not provided any substantiation that the opposition division's finding was erroneous that the subject-matter of claims 1 and 5 of the main request (then auxiliary request 3) lacked novelty over the disclosure of document D4 if this document is entitled to priority from application P4 (D4a). The board has therefore no reason to depart from the opposition division's decision on this issue.