T 2360/19 - Rebutting the presumption on priority entitlement

Key points

• In T 0844/18, the Board had decided - after an extensive debate between the parties - that the priority of one of the major patents for 'CRISPR/Cas' was invalid because the PCT application was filed by the company and the priority application (a US provisional application) was filed by the inventors and there was no assignment in place from one of the inventors to the PCT applicants at the PCT filing date.
• The Board applied the established case law at that time (in my view).
• The Enlarged Board, in G 1/22, where the question was whether an informal / oral assignment of the priority right was possible, added the remark in para. 128 that: "An agreement (regardless of its form) can only be held against parties who were involved in the facts establishing the agreement. Co-applicants for the priority application who were not involved in the subsequent application may not be deemed to have consented to the reliance on the priority right by the other co-applicants for the priority application (a situation underlying e.g. T 844/18). The subsequent applicant(s) may however still be entitled to claim priority since the rebuttable presumption of entitlement does not depend on whether the involved applicants acted as co-applicants at any stage."
• This is quite remarkable, given that a large number of divisional patent applications in the patent family of T 0844/18 were still pending. 
• The present case is about a divisional application originating from the same PCT application ('819) filed in 2013.
• "15. The opponents are thus arguing that the appellants [proprietors] have not provided evidence that they are entitled to the priority rights they claim. However, this is precisely what the presumption in G 1/22 states: that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There is no evidence that rebuts this presumption in the present case."
• The Board then discusses a settlement between the inventor Mr. Marrafini and the proprietors of the present patent, concluded in 2018. "However, it is common ground between the parties that the inventorship dispute between Marraffini/Rockefeller University and the appellants has been settled in 2018. The entire purpose of the inventorship dispute was to have Marraffini named as inventor, and the Rockefeller University as proprietor, of PCT 819 (and some other PCT applications). "
• " Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed (see G 1/22, reasons 100, 109)."
• G 1/22 r.100: "Even the requirement that the transfer of the right of priority needs to be concluded before the filing of the subsequent European patent application (above point 68) is questionable in the Enlarged Board's view. If there are jurisdictions that allow an ex post ("nunc pro tunc") transfer of priority rights (see the extensive discussion of such transfers under US law in T 1201/14), the EPO should not apply higher standards."
• "However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file (see again G 1/22, reasons 100). As also reiterated in G 1/22, reasons 114: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute. Hence the entitlement to priority was validly claimed."
• Im unsure about how this paragraphs should be understood.
• "G 1/22 brings legal certainty to all involved, in particular for the parties that the system was designed to protect."
• The priority is considered to be valid.
• After the clear 'instruction' of the Enlarged Board in para. 128, this is perhaps not a surprising outcome. 
• However, generally, the substantiation of the rebuttal of the presumption of G 1/22 by the opponents should not be a burden to prove a negative. 

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t192360eu1

Entitlement to priority: Enlarged Board of Appeal Decision

G 1/22 and implications for the present case

2. In reasons 105 of G 1/22, the Enlarged Board found that "... entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the applicant claims priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations. ...".

3. This presumption is based on the concept of an implicit (implied, tacit or informal) agreement on the transfer of the priority right from the priority applicant to the subsequent applicant:

"under almost any circumstances" (see G 1/22, reasons 99; cf. also reasons 106, 107, 122, 125, 126, 127; cf. also reasons 24, 67, 72, 86, 94).

It, notably, allows ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application (see reasons 100 and 114). And, the Enlarged Board continues in reasons 100: "However, the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which priority is claimed for the subsequent European application".

4. The Enlarged Board found that a priority right and its transfer is a matter exclusively governed by the autonomous law of the EPC (reasons 86, 88, 90, 99, 101, 111, 126 ff, 133). Consequently, there is no room for the application of national laws on legal presumptions and their rebuttal (reasons 111).

5. The Enlarged Board further found that the presumption that the subsequent applicant is entitled to the priority right is a strong presumption, under "normal circumstances" (see reasons 110).

6. In reasons 107 and 134, the Enlarged Board states that the presumption will apply to any case in which the subsequent applicant is not identical with the priority applicant, and thus also to a plurality of co-applicants for the priority application regardless of the extent to which that group overlaps with the co-applicants for the subsequent application.

7. This is the situation in the present case. Thus the presumption of a validly claimed priority applies.

8. G 1/22, in reasons 108, 131, further provides that the presumption can be rebutted, to take into account "rare exceptional cases" where the subsequent applicant cannot justifiably rely on the priority.

9. The rebuttable presumption thus involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing. Just raising speculative doubts - even if these are "serious" as in the words of the Enlarged Board (see G 1/22, reasons 110, 113) - is not sufficient: to put into question the subsequent applicant's entitlement to priority, (full) evidence would be needed (see reasons 110, 126).

10. The concept as developed in G 1/22 of the rebuttable, but strong presumption for the right to claim priority, to be assessed under the autonomous law of the EPC, has recently been endorsed by the German Bundesgerichtshof (BGH) in X ZR 83/21, GRUR-RS 2023, 37747, Rnn. 110, 120 ff. - Sorafenib-Tosylat, and X ZR 74/21, Rnn. 67 ff. - Happy Bit. Notably, the BGH underlined that the Enlarged Board's reasoning was persuasive and yielded realistic and appropriate results, and that the mere challenging of another party's submissions was not sufficient to rebut the presumption.

11. The "evaluation of evidence" and the conclusion on an implicit transfer agreement in G 1/22 was also found persuasive in the jurisprudence of the Swiss Federal Patent Court (Bundespatentgericht) in Mepha Pharma AG v Bristol-Myers Squibb Holdings Ireland Unlimited Company, BPatGer, Urteil O2022_007, Rn. 30; cf also Bayer HealthCare LLC v Helvepharm AG, BPatGer, Teilurteil O2022_006.

12. It has also already been reflected in the boards' jurisprudence (T 2719/19, reasons 4 ff, T 521/18, reasons 2).

13. In the present case, the parties have made extensive submissions on whether Marraffini/Rockefeller University made a transfer of the rights to make a priority claim to the appellants. The opponents' arguments were mainly based upon the contents of documents D240 and D462.

14. These documents concern the resolution of the inventorship dispute and say nothing about priority entitlement. This is also the position of the opponents. From this, the opponents argue that these documents do not provide any basis for inferring the existence of an implicit transfer of the priority rights from Marraffini/Rockefeller University to the appellants.

15. The opponents are thus arguing that the appellants have not provided evidence that they are entitled to the priority rights they claim.

16. However, this is precisely what the presumption in G 1/22 states: that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption.

17. There is no evidence that rebuts this presumption in the present case.

18. If at all, there is evidence to the contrary, which supports the presumption of an implied transfer agreement.

19. The opponents point out, in this context, that Marraffini and the Rockefeller University also filed a patent application (D288) naming in addition F. Zhang as co-inventor and the Broad Institute and MIT as co-applicants. This patent application claimed priority inter alia from P1 and P2 and was filed during the inventorship dispute. Thus they could not have consented to the appellants also filing applications claiming, inter alia, these priorities.

20. However, it is common ground between the parties that the inventorship dispute between Marraffini/Rockefeller University and the appellants has been settled in 2018.

21. The entire purpose of the inventorship dispute was to have Marraffini named as inventor, and the Rockefeller University as proprietor, of PCT 819 (and some other PCT applications). In the absence of evidence to the contrary, it is not credible that Marraffini or the Rockefeller University would have acted in a way to invalidate the priority claim of a patent they were seeking to be named as inventor of, and owner of, respectively.

22. Accordingly, as already set out in the board's communication, the very purpose of the final arbitration settlement was to safeguard the inventions made by Marraffini, alongside the other inventors, and ensuring their patent protection, not the least because of the parties' common interest in the validity of the necessary priority rights.

23. Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed (see G 1/22, reasons 100, 109).

24. The settlement of the inventorship dispute is thus no "later development" (see G 1/22, reasons 109), but confirmed, to the contrary, an ex-post transfer agreement. Accordingly, history is not "rewritten", as asserted by the opponents.

25. However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file (see again G 1/22, reasons 100).

26. As also reiterated in G 1/22, reasons 114: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute.

27. Hence the entitlement to priority was validly claimed