T 0883/23 - Plausibility and priority

Key points

• In this appeal, the Board found the second medical use claim to be valid (novel and inventive and sufficiently disclosed in the patent). Still, the Board - obiter it seems - held that the priority was invalid because, whereas the application as filed contained the results of a clinical trial, the priority document contained only the protocol for that study (without the results).
• Hence, the 'plausibility' or credibility requirement of G 2/21 r. 74 and r.77 for second medical use claims applies by analogy to the priority application, it seems.
• The Board's headnote formulates it differently: "The Enlarged Board of Appeal determined in G 2/98 that it is a condition for the compliance with the requirement of "the same invention" that the claimed subject-matter is directly and unambiguously derivable from the earlier application. However, the Enlarged Board did not conclude that the requirement of "the same invention" is necessarily satisfied if this condition is fulfilled, irrespective of any technical information associated with the claimed subject-matter, which is only described in the subsequent patent application."

EPO 

The link to the decision can be found after the jump.

T 0098/23 - Retroactive assignments of priority rights are fine (Crispr-cas redux)

Key points

• This is one of the cases about CRISPR-Cas.
• " The issue here is, like in T 844/18, T 2360/19, T 2516/19 and T 2698/19, whether Mr Marraffini as one of the claimed inventors or The Rockefeller University as his successor in title gave their consent to the subsequent filing of the patent application in question (decision under appeal, item 50, with reference to T 844/18). "
• "According to G 1/22 (Reasons 107 and 125), the presumption of priority entitlement, by way of an implicit (implied/informal or tacit) agreement on the transfer of the right to claim priority "under almost any circumstances" (Reasons 99), applies to any case where the subsequent applicant is not identical with the priority applicant. Also ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application are valid (Reasons 100 and 114)."
• R.100: "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."
• R.114: "it may be noted that the EPC explicitly foresees the ex tunc assignment of priority rights, at least in the context of disputes on the right to the patent before national courts: if a person other than the original applicant is found to be entitled to the grant of the European patent, this person may choose to file a new European patent application in respect of the same invention under Article 61(1)(b) EPC. To such new applications, Article 76(1) EPC "shall apply mutatis mutandis" according to Article 61(2) EPC. Under Article 76(1) EPC, "[t]he divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority". This means that the new application filed by the rightful applicant under Article 61(1)(b) EPC is deemed to have been filed on the date of filing of the earlier application and to have the benefit of any right of priority (G 3/92, OJ EPO 1994, 607, Reasons, point 5.4)."
• As a comment, I don't know if it is an assignment of the priority right in this case. I guess that language plays a role, but under Dutch law, assignment is seen as a species of the genus transfer. 
•  "The inventorship dispute between Mr Marraffini/The Rockefeller University and Mr Zhang/The Broad Institute Inc/Massachusetts Institute of Technology has been settled in 2018 by decision of an arbitrator (inter alia D256, The Broad Institute press release dated 15 January 2018, 1-3). Applying G 1/22, the settlement by arbitration contains (and confirms that there is), at least, an implicit agreement nunc pro tunc. Thus the presumption of entitlement to priority is on the earliest date on which priority was claimed, 12 December 2012 (US 61/736527, P1)." 
• " G 1/22 explicitly also states that "the presumption of entitlement exists on the date on which the priority is claimed and the rebuttal of the presumption must also relate to this date", and that "later developments cannot affect the rebuttable presumption" (Reasons 109). As being retroactive, the at least implicit transfer agreement by way of the settlement of the inventorship dispute relates to this date, and confirms the presumption on entitlement to exist on this date."
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EPO 

The link to the decision can be found after the jump.

T 0518/22 - Disclaimers and partial priority

Key points

• Partial priority and undisclosed disclaimers: are you ready?
• To jump to the conclusion: "Document D2 is thus prior art under Article 54(2) EPC for the subject-matter of claim 1 not enjoying priority, i.e. in relation to the "consisting" and "comprising" embodiments concerning SEQ ID NOs: 5 to 8, and prior art under Article 54(3) EPC for the subject-matter of claim 1 enjoying priority, i.e. in relation to the "consisting" and "comprising" embodiments concerning SEQ ID NO: 4."
•   The "comprising" embodiment in relation to SEQ ID NOs: 5 to 8 of claim 1 encompasses Type-A DNA polymerase mutants that are structurally identical to Taq mutants disclosed in document D2. Appellant I has not argued to the contrary. The fact that the patent does not call these polymerases Taq mutants but gives them a different name does not change the fact that these mutants are structurally identical."
• "Since the undisclosed disclaimer added to claim 1 in auxiliary request 2 (point 17 above) thus removes embodiments of document D2 which belong to the state of the art pursuant to Article 54(2) EPC and are not an accidental disclosure, such amendment is not allowable under Article 123(2) EPC. Auxiliary request 2 comprises therefore added subject-matter (G 1/03, Headnote 2.1 and G 1/16, OJ 2018, 70, Headnote)."
  
  
• On Article 13(2) RPBA: " As regards the validity of the patent's priority claim based on P the following is noted. In reply to the communication under Article 15(1) RPBA indicating the board's preliminary opinion that priority was not valid for the subject-matter of claim 1 of auxiliary request 2, appellant I has submitted for the first time the argument that embodiments of claim 1 in reference to SEQ ID NO: 4 were entitled to claim a partial priority from P. "
•  Since appellant I introduced the issue of partial priority of certain embodiments of claim 1 in response to the board's communication shortly before the oral proceedings, appellant II could not have submitted their counterarguments on this issue earlier than at the oral proceedings. The board found merit in appellant I's arguments on partial priority of claim 1 and considered it a legitimate reaction to the board's preliminary opinion. For reasons of equity, the board therefore admitted into the proceedings the new lines of arguments on partial priority of both appellants. The same applied to appellant II's new line of argument under lack of novelty over document D2 in relation thereto."
  
  
• On pre-emptively filed auxiliary requests and the need for substantiation.
• "Appellant II [The opponent] requested that auxiliary request 3 not be admitted into the proceedings, arguing in essence that appellant I did not provide any reasons in their SGA under Article 12(3) and (4) RPBA as to why this auxiliary request (filed as auxiliary request 5 with the SGA) overcame any of the objections raised. In similar circumstances these provisions had led the Boards to decide not to admit auxiliary requests, for example, in case T 559/20."
• "The board agrees with appellant I that the purpose of the amendment by deletion of all reference sequences except for SEQ ID NO: 4 in claims 1 and 9 of auxiliary request 3 was straightforward, as it was clear that it was made to establish novelty and to overcome the finding of added subject-matter. In these circumstances and differently from the situation present in the case law cited by appellant II, the level of substantiation provided in the SGA, as well as in the further submission of 14 December 2022, is considered appropriate. Further, as this amendment is occasioned by objections raised in the proceedings, it complies with the requirements of Rule 80 EPC." 
• "Furthermore the opposition division held that the patent in suit could be maintained in amended form on a request ranking higher than present auxiliary request 3 (section III above). Since appellant I was thus not negatively affected as regards auxiliary request 3, also for this reason the situation in the present case differs fundamentally from that underlying T 559/20, wherein the set of claims in suit had been the object of the appealed decision (T 559/20, Reasons 3.2). Hence, contrary to appellant II's arguments, decision T 559/20 cannot therefore support their case either."
• I think AR-3 was then filed pre-emptively with the Statement of grounds. I wonder whether the proprietor should have substantiated them in their reply to the statement of grounds of the opponent, which attacked the set of claims held allowable by the OD? Or does the pre-emptive filing liberate the proprietor from that obligation? Althoug in the present case, the amendment could have been self-evident.
• There is also some interesting reasoning on the credibility (formerly plausibility) of second medical use claims under G 2/21.
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EPO 

The link to the decision can be found after the jump.

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.

G 1/22 - Entitlement to priority (comments)

Key points

• The Enlarged Board decided that assignments of priority rights that are claimed for the benefit of European patent applications, are regulated exclusively by the EPC as autonomous law, and that accordingly implied agreements suffice for such assignments. Moreover, a rebuttable presumption exists that the applicant of the subsequent application is entitled to the priority right if the priority declaration and priority document are timely filed under Article 88 EPC and the Implementing Regulation. The key parts of the decision (paras 129-131 and paras. 99 and 100) are shown below.  
• Below the "read more", I provide a paragraph-by-paragraph analysis of G 1/22.
• The German BGH decided to follow G 1/22 in a recent decision (X ZR 83/21 para. 119;  link)
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129. The subsequent applicant wishing to file a European patent application should not only hold the title to that European application (i.e. the right to the European patent [i.e. the right of Art. 60(1) EPC) but also the priority right [Art. 87(1) EPC] if such right [i.e. priority] is claimed for the European application.
In the context of the EPC and the proceedings before the EPO, a strict distinction should be made between the two rights. The title to the subsequent application, on the one hand, is [...] assessed by national courts in view of Article 60(3) EPC (above points 79 ff). The right to claim the priority date for the subsequent European application, on the other hand, has been shown to be a right created under the autonomous law of the EPC and the Paris Convention, the transfer of which should also be assessed under the autonomous law of the EPC (above points 83 ff).

130. The exclusive application of the autonomous law of the EPC to the transfer of priority rights removes the need for conflict of laws rules and the application of national laws, thereby eliminating two main reasons invoked against the EPO's competence to assess whether a party is entitled to claim priority under Article 87(1) EPC. After evaluating various arguments supporting and denying this competence of the EPO (above points 83 ff, 93 ff), the Enlarged Board concludes that the EPO is competent to assess priority entitlement.

99. [...] The EPO should [...]  accept informal or tacit transfers of priority rights under almost any circumstances.  [...]

100. For example, the autonomous law of the EPC should not require that the assignment of priority rights has to be in writing and/or has to be signed by or on behalf of the parties to the transaction (see above point 69 for the diverging case law on this issue) since this would establish a high threshold in view of the national laws. [...]

131. In view of the interests of the parties involved, the lack of formal requirements for the transfer of priority rights [see point 99 above] and the necessary cooperation between the priority applicant and the subsequent applicant in the context of the procedural requirements under Article 88(1) EPC [i.e. the filing of the priority document], the Enlarged Board concludes that the entitlement to priority should be presumed to exist. This presumption should be rebuttable to take into account rare exceptional cases in which the claiming of the priority by the subsequent applicant appears to be unjustified (above points 101 ff).

T 2407/19 - Sole substantive condition priority

Key points

•  "As established by the Enlarged Board of Appeal in its opinion G 2/98 (OJ EPO 2001, 413) and confirmed in its decision G 1/15 (OJ EPO 2017, 82), the sole substantive condition laid down by the EPC (and the Paris Convention) for the right of priority to be validly claimed is that the priority document and the subsequent filing are directed to the same invention (Article 87(1) EPC). Article 4C(4) of the Paris Convention mentions "the same subject". However, the meaning is identical (see G 1/15, point 4.2 of the Reasons)."
• "The requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole (see G 2/98, Conclusion of the Opinion).

  Moreover, the "same invention" must be disclosed in an enabling manner in the priority document (see G 1/15, Order of the decision)."

• As a first comment, an open question is how this case law relates to the plausibility/technical teaching requirement of G2/21.

• A second question is whether this means, under T1482/21, that the Opposition Division is not competent to review the decision of the Examining Division that the priority claim of the granted application is valid as far as the formal issue of entitlement is concerned (G 1/22).

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• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1946/21 - (I) Transfer of priority, partial priority, and no shield effect of priority

Key points

• In this decision issued on 21.07.2023, the Board clarifies whether an assignment of a priority right must be executed at the latest on the day before the filing date of the subsequent application or can be executed on the day the subsequent application is filed but before the filing.
• "It is disputed whether the right to priority was validly transferred to the respondent and whether, therefore, the respondent was entitled to claim priority from the CN'506 application"
• "At the oral proceedings, the opponents agreed that the last question was decisive for the case in hand; if it were decided that in order to validly claim priority, the assignment could have been made on the day on which the subsequent application is filed, all the other issues would no longer be relevant."
• "It is settled case law that for the requirement of Article 87(1) EPC it is insufficient if the transfer agreement was concluded after the subsequent application was filed. The succession in title has to have taken place by the time the subsequent application is filed (T 577/11, Reasons 6.5.2; see also T 1201/14, Reasons 3.1.1.3). "
• There is no prior case law of the Boards about a same-day assignment.
• "There is a simple reason why the assignment of the right to priority need not be effective before the filing date of the subsequent application in order to meet the requirement of "successor in title" under Article 87(1) EPC: that is not what the law says."
• Introducing the requirement "would lead to the situation where a successor in title who obtained the right to priority on a certain day by way of an assignment always has to wait for the next day to file the subsequent application in order to enjoy its right to priority. In other words, the successor in title entitled to the right to priority because it was transferred to it on a certain day could not benefit from this right on that day. The Board cannot see any convincing reasons why this should be the case."
• "The applicant who on that day becomes successor in title could not file the subsequent application and enjoy a right to priority - they would have to wait until the next day but would then miss the deadline and be unable to enjoy the right to priority. The Board sees no reason for such unequal treatment."
• "It is down to the patent proprietor relying on the right to priority to demonstrate that the assignment was effective before the subsequent application is filed. Thus, if only the date on which the subsequent application was filed can be determined but not the exact time in the course of a day, the application may have to be considered to be filed at any time on the day of filing. If the assignment of the right to priority was then effective on that same date, the patent proprietor will not be able to successfully demonstrate that the then applicant had been the "successor in title" at the moment of the filing, i.e. that the assignment had been effective before the subsequent application was filed. This is not a question of legal certainty or treating applicants unequally; it is a question of fact which has to be proven by the applicant of the subsequent application claiming the right to priority.
• Indeed, it is down to the applicant filing the subsequent application to decide whether it is worth taking the risk of having to prove not only the filing date of the application and the assignment date but also the exact time of day of both. This may also depend on the chosen means of filing (delivery, postal services, electronic means) - the exact time of filing may be easier to prove for some means of filing than for others. It may thus be very much advisable, in order to avoid any issues of proof in this respect, to complete the transfer on the day before the subsequent application is filed. However, this is a decision for the applicant to make."
• As a practical tip, the applicant can just include a copy of the assignment with the filing documents of the subsequent application.
• "Taking into account the evidence on file, the Board considers that the respondent has indeed demonstrated that the contracts regarding the transfer of the right to priority had been validly concluded when it filed the subsequent application on 5 September 2014. This was not contested by the appellant or the intervener (see point 2.2 above). In view of the above considerations, the Board thus concludes that the then applicant was indeed the "successor in title" who enjoyed the right to priority within the meaning of Article 87(1) EPC.'

Partial priority

• Now turning to truly EQE D stuff.
• The application claims the priority of 8 Chinese patent and utility model applications applications and one Dutch patent application. The applicant is a US legal entity, the inventors are Chinese. The CN utility model application was published in the priority year.
• "The appellant and the intervener argued that the disclosure of [Chinese utility model application] D29 could not provide a priority right for the general subject-matter of claim 1 as granted. Consequently, the content of D29 - corresponding to a particular embodiment of the general subject-matter claimed in the contested patent - anticipated the subject-matter of claim 1, which was therefore not novel. In particular, no partial priority of claim 1 could be acknowledged in the light of the decision of the Enlarged Board of Appeal in case G 2/98 since D29 did not concern an alternative among a limited number of alternative subjects with regard to claim 1 as granted. Rather, claim 1 encompassed an unlimited number of alternatives when compared with the disclosure of D29.| 
• "The Board finds, however, that the principles established in G 1/15 apply to the case in hand."
• "In this Board's opinion, the Enlarged Board has indeed used the term "or otherwise" in the conclusion of G 1/15 to include all kinds of generalisations and thus to not be limited to the use in the subsequent application of a generic expression or a broadening of a chemical formula, etc."
• The Board does not admit the inventive step attack starting from D29. "the line of attack starting from D29 as the closest prior art is not taken into consideration (Article 13(2) RPBA 2020)."
• Question for the readers: how can D29 be cited as the closest prior art, given that the partial priority is found to be valid?
•  Assume that D29 teaches "gold" and the claim specifies "metal", the priority is invalid for the embodiments other than gold. Because D29 was published in the priority year, it can be fully cited against the claim embodiments lacking priority. The EPO does not have the shield theory of priority (see my post of 01.09.2017). It does not matter that the priority of D29 is claimed.
• Generally, a prior disclosure of "gold" would make it obvious to use other metals. However, this is a matter of fact and can depend on the circumstances. In the case at hand, the attack was late filed under Art.13(2) and the Board could dismiss it as not prima facie relevant because "Document D29 only discloses laminated elements arranged vertically in an annular array (see claim 1, and also page 3, lines 27-29, and paragraphs [0011] and [0025] of D29.1). The skilled person could not infer from D29 that the laminated elements could be arranged in a different orientation or so as to form an array which is not annular. " ... "the modification of the annular arrangement disclosed in D29 is not a mere design choice but would require a pointer in order to be considered by the skilled person. The appellant and the intervener have failed to indicate where the skilled person would find this pointer or why it belongs to the common general knowledge."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0411/19 - Plausibility for novelty and for priority

Key points

• Claim 1 is a second medical use claim directed to:  "A composition comprising at least one peptide that inhibits plasma kallikrein for the use in the treatment of ophthalmic disorders in a patient in need thereof, ..."
•  Patentee "had several lines of argument as to why document D2 did not disclose subject matter anticipating that of claim 1. They were i) that document D2 was not enabling for the medical treatment as defined in claim 1, because the experiments reported in document D2 did not constitute an actual treatment of any ophthalmic disorder, ..."
• "The appellant's first line of argument is based on the observation that "the experiments of D2 do not constitute an actual treatment of any ophthalmic disorder at all". This, however is not the right test for deciding whether a document discloses a medical use in such a way that it can be carried out by a person skilled in the art. Instead, the document should disclose the suitability of the product for the particular therapeutic application"
• "In view of [the experimental results in] document D2 [a PCT application establishes at least an initial plausibility that the compounds mentioned in claim 1 (of document D2), i.e inhibitors of the pathway set out in Fig. 6 of document D2, are suitable for achieving the therapeutic aim."
• " To counter this initial plausibility, evidence in the form of verifiable facts would be required to show that serious doubts exist about the claimed peptides' suitability for achieving the therapeutic effect. No such evidence has been put forward by [the patentee].
  
  
• "[The opponent] was of the view that subject-matter of this claim request is not entitled to the earliest priority date, 16 February 2006 because the application [P1] from which priority is claimed (EP 06360008) does not sufficiently disclose the suitability of the claimed compounds for the claimed therapeutic use"
• "According the established case law of the boards, a claimed second medical use meets the requirements of Article 83 EPC if the patent discloses the suitability of the product for the claimed therapeutic application, if this was not known to the skilled person at the relevant date []. This standard applies to priority documents equally, because the priority document must disclose the invention claimed in the subsequent application in such a way that it can be carried out by a person skilled in the art "
• " document P1 contains no experimental data or other evidence of any kind that goes beyond a mere allegation that the peptides defined in that document are indeed suitable for treatment of any of the ophthalmic disorders listed. That the peptides mentioned are suitable is not at all self-evident because it is the essence of the contribution to the art of the invention purportedly made in document P1. In the absence of such evidence, it cannot be concluded that document P1 provides even an initial plausibility that the claimed compounds are suitable for treating the disorders in question. "
• As a comment, it seems that a sentence stating verbatim "compound X is suitable for treating disease Y", is not a disclosure that compound X is suitable for treating disease Y in this context. Perhaps the term "disclose" is not entirely precise in the sense that what is required is something different from the gold standard test of G 2/10. See also T 2842/18. 
• "the passages cited by [the patentee] on page 6 [of P1] are not evidenc/e but mere allegations of suitability. In conclusion, document P1 does not disclose the invention of claim 1 in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The invention claimed in claim 1 of the main request is therefore not the "same invention" in the sense of Article 87(1) EPC* as the invention disclosed in document P1. Thus, the invention claimed in claim 1 of the main request cannot validly claim priority from document P1."
• * = Note, it might have been the same invention in the sense of G 2/98; at least this aspect of the disclosure in P1 is not disputed. 
• As a comment, the Board apparently saw no need to wait for G 2/21 even though one of the proposed answers in that referral is "no plausibility requirement at all" (in the context of inventive step, admittedly). 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0419/16 - First medical use and Art.123(2)

Key points

• " The [opponents] argued that the subject-matter of claim 1 (see section V) had no basis in the application as filed. In their view, the application as filed disclosed the claimed antagonist of IL-33 only for a specific medical use, but not for a first medical use [claim, i.e. "  An antagonist of IL-33 for use as a medicament"]." 
• " The board recalls that Article 54(4) EPC provides for claims directed to a first medical use of a per se already known substance or composition and that such a claim confers broad (albeit purpose-limited) protection for substances or compositions, covering any use in a medical method, even if only one specific use is disclosed in the application (see Case Law of the Boards of Appeal of the European Patent Office, 2019, I.C.7.1.1 and decision T 128/82, OJ EPO 1984, 164). It is the board's view that it follows from this case law that the disclosure in an application of a substance or composition for a specific medical use is a basis for a claim directed to a first medical use." 
• " Contrary to the appellants' submissions, the findings in decisions T 36/83 (OJ EPO 1986, 295) and T 128/82 do not support the view that a basis for a first medical use claim (in the sense of Article 123(2) EPC) can only be an identical or equivalent broad disclosure in the application as filed. In both decisions, it was held that a broad disclosure of a pharmacologically active substance for use as a medicament provided a basis for a corresponding broad (first medical use) claim. These decisions however did not consider other possible bases for such a claim nor rule out that the disclosure of a specific medical use can constitute a basis for a claim to a first medical use." 
• T 128/82 hn: " Where a known compound is for the first time proposed and claimed for use in therapy, the fact that a specific use is disclosed in the specification does not in itself call for a restriction of the purpose-limited product claim to that use" 
• To quote T 128/82 in the OJ translation from German,  further on Art. 54(5) EPC 1976 (now Art. 54(4) EPC): "[this provision] introduces, in respect of substances and compounds used in surgical and therapeutic treatment and in diagnostic processes carried out on humans and animals (hereinafter referred to briefly as "therapy"), a special concept of novelty unknown in other technical fields. This article was based on the French form of patent for medical preparations applying at the time of the Munich Diplomatic Conference. However, the history of Article 54(5) EPC does not reveal any uniform idea on the part of the negotiating States as to the breadth of the claim to be allowed for pharmaceutical inventions. The protection of inventions relating to therapy has under the EPC been incorporated in the general substantive patent law (Part II Substantive Patent Law, Chapter I - Patentability - Articles 52-57) and has thus been separately regulated, making it impossible clearly to decide which elements of the French form of protection for medical preparations it was intended to include in the EPC. On the other hand, the protection afforded by a French medical preparation patent was not restricted to a given pharmaceutical application (such as the combating of a certain disease). It is therefore impossible to derive from the travaux préparatoires any arguments in favour of limiting claim scope." 
• Still: T 128/82 "  If an inventor is granted absolute protection in respect of a new chemical compound for use in therapy, the principle of equal treatment would require that an inventor who for the first time makes a known compound available for therapy should be correspondinlyg rewarded for his service with a purpose-limited substance claim under Article 54(5) EPC to cover the whole field of therapy. Any other treatment would only be justified were Article 54(5) EPC absolutely to forbid a broad protective scope. The fact that Article 54(5) EPC does not contain any requirement that protection should be broad is of itself no reason for refusing to grant such protection. As a general rule the usual practice as it relates to new compounds should be followed." 
• " the practice of the European Patent Office hitherto has shown that substance and [pharmaceutical composition] claims [Stoff- und Arzneimittelansprüche] for therapeutically active compounds not limited to specific indications are allowed, even though as a rule only certain specific activities are [indicated] [note: i.e. in the description]." [obwohl in der Regel nur gewisse spezifische Aktivitäten konkret angegeben werden]
• As the present Board notes in r.27, by the same token, this applies also to Art.83:  an enabling disclosure of a single medical use, provides an enabling disclosure for a first medical use claim reciting "for use as medicament". It may be added that this  applies by the same token to the technical effect under Art. 56.
• The Board, citing T 128/82 later in the decision: " This objection fails because they are based on a misunderstanding of the first medical use claim format established by Article 54(4) EPC. As set out in decision T 128/82, Article 54(5) EPC 1973 (now Article 54(4) EPC) provides a special concept of novelty for any substance or composition, comprised in the state of the art, for use in a method referred to in Article 52(4) EPC 1973 (now Article 53(c) EPC), provided that its use for any method referred to in that paragraph is not comprised in the state of the art (see decision T 128/82, Reasons 9; confirmed by decision G 5/83, OJ EPO 1985, 65, Reasons 21). The decision further clarifies that "[i]f an inventor is granted absolute protection in respect of a new chemical compound for use in therapy, the principle of equal treatment would require that an inventor who for the first time makes a known compound available for therapy should be correspondingly rewarded ... with a purpose-limited substance claim under Article 54(5) EPC [1973 (now Article 54(4) EPC)] to cover the whole field of therapy" (Id., Reasons 10)." 
• The Board clarifies that the same holds for priority: "  A logical consequence of the availability of purpose-limited substance protection for a first medical use is that the disclosure of a single therapeutic use of a compound is both sufficient to meet the requirements of Article 83 EPC and to serve as a basis for such a claim in the sense of Articles 87(1) EPC and Article 123(2) EPC, respectively." 

EPO T 0419/16

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

G 1/22 - Entitlement to priority

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?"

EPO G 2/22 ; G1/22; T2719/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

1786/15 - Transfer of priority

 Key points

• In this opposition case, the decisive issue is transfer of priority.  The priority stems from a US provisional application filed int he name of the inventors.
• The critical document is “D51: Ownership reallocation policy, as applicable to The Massachusetts General Hospital, dated 18 September 2002.” However, that document is not signed and “therefore it cannot provide conclusive evidence that the reallocation policy, set out therein, was in fact adopted”. 
• The Board: “The appropriate standard of proof to be applied in this factual situation is not the balance of probabilities. Indeed, in cases where all evidence supporting a specific statement of fact (for instance a public prior use) is within the power and knowledge of one party, the Boards of Appeal apply a stricter standard of proof, namely the standard "beyond reasonable doubt"”.
• This point might be very important in practice. 
• The Board does not itself positively decide on which law is applicable to the alleged transfer, in view of the parties agreeing on that point.

 1786/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151786eu1.html

Entitlement to priority of document D1 (Article 87 EPC)

5. In the proceedings before the opposition division, the opponent (now respondent) challenged the patent proprietor's entitlement to claim the priority stemming from document D1 (see Section VII., above)

6. The opposition division agreed with the opponent's objection and consequently considered that document D8, published in the priority interval, was prior art and decisive in assessing the patentability of the subject-matter of claim 1 of auxiliary requests 1 and 2.

7. In appeal, the appellant challenged this point of the decision, arguing that the priority was validly transferred. In view of this, the first question to be answered is whether or not the patent can validly claim the priority of document D1.

8. It was common ground between the parties that:

(i) the EPO is entitled to examine whether or not an applicant can claim the priority of a previous filing;

(ii) the applicant can only claim the priority of document D1 if a transfer from the inventors to the applicant occurred before the filing date of the PCT application, document D2;

(iii) the question of whether such transfer occurred should be determined according to national law;

(iv) the relevant national law, in the present case is US law: federal law where the effect of the assignment is concerned, state law where the construction of the contract is concerned.

9. For the purpose of the present decision, the board does not, ex officio, challenge any of the above points of consensus between the parties. Instead, it will address the main point of disagreement between the parties, being the question of whether or not documents D31 and D51 demonstrate, according to the applicable standard of proof (see point 13., below), that the appellant acquired ownership of the priority right created with the US filing of document D1 before the date of filing of the PCT application, without the need for any separate additional transfer.

T 0407/15 - Transfer of priority

 Key points

• The present decision is about a transfer of priority.
• “[The priority applications] US applications 61/035 540 and 61/035 777 were filed jointly by three persons, who happen to be the inventors mentioned in relation to present application. ... As the applicants of the earlier US applications and later PCT application are not the same, a valid priority claim would require a transfer or rights from the original applicants jointly to the present applicant, before the filing date of the international application.”
• The Board: “Article 87 EPC does not require an express assignment in writing or exclude a transfer by operation of law or by conduct of the parties concerned implying such transfer (cf. T205/14, points 3.3 and 3.6 [vertabtim in 3.3, para 4.]). Independently, however, of the form that the transfer of the priority right might have taken, evidence of such a transfer must be provided in order for the Board to decide on the issue. The standard of proof applied is the balance of probabilities.”
• So: Article 87 EPC does not require an express assignment in writing.
• Article 87 EPC does not exclude a transfer by operation of law
• Article 87 EPC does not exclude a transfer by the conduct of the parties concerned implying such transfer 
• These three points apply independently of the country of filing the priority-founding application.
• Evidence of the transfer must be provided in order for the EPO to decide on the issue.
• The standard of proof applied by the EPO is the balance of probabilities
• These two points also apply independently of the country of filing of the priority-founding application.
• The present case is an appeal against a refusal decision. The Board does not restrict the sentence to examination appeals. 
• In the case at hand, the applicant /appellant “[d]espite having been invited to do so by the Board, [...] failed to provide any evidence that such a transfer took place and that it was entitled to claim these priority rights.”
•  The Application Data Sheet of the two US provisional applications indicated The University of Western Ontario [i.e. the same as the PCT applicant] as the assignee. 
• The Board: “this is, however, not sufficient to establish that the priority rights derived from either application have also been transferred to the applicant. This is a consequence of the fact that the filing of a first application gives rise to two different and independent rights, namely the right to the application in question, and the right of priority. While the sections of the priority documents referred to above appear to provide evidence of a transfer of the right to a patent, it is silent as to any right of priority based on said filings.”

T 0407/15

https://www.epo.org/law-practice/case-law-appeals/recent/t150407eu1.html

Reasons for the Decision

Entitlement to priority

1. The application was initially filed as an international PCT application on 11 March 2009 by The University of Western Ontario. It claims priority rights from the earlier US applications 61/035 540 and 61/035 777 of 11 March 2008 and 12 March 2008, respectively. The application entered into the European phase on 9 September 2010. The entitlement to claim said priority rights is to be assessed on the basis of the relevant provisions of the EPC.

2. Article 87(1) EPC stipulates that

A person who has duly filed [...] an application for a patent [...], or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority [...].

It follows that the applicant who claims a priority right from an (earlier) application must be the same as or, alternatively, the successor in title to the applicant who filed said application.

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"):

T 0844/18 - CRISPR Cas / Priority

 Key points

• The Board's written decision in the Crispr-cas case has been issued. The Board gives it publication code [D], interestingly enough. Still, a Press Communiqué was issued (here). The decision is also given a headnote.
• The Press Communiqué is, of course, no legal basis but gives a useful introduction to this decision, which seems useful as the file is > 46.000 pages as of yet. 
• The facts are basically that the patent is not novel or not inventive if the priority claim is not valid, the priority application was a US provisional application filed by inventors A and B jointly, the PCT application by the employer of A only, without any assignment of rights from A to B. 
• The Communiqué: “The first question addressed by the Board was whether entitlement to priority should be assessed by the EPO or rather in entitlement actions before national courts. The Board concluded that Article 87(1) EPC both empowered and obliged the EPO to assess the validity of a claim to priority.”
• The Board: “The position of the appellants [patentees] is that the EPO should not concern itself with the "who" issue when applying Article 87(1) EPC, they are content with the EPO assessing the "where", "what" and "when" issues. The Board disagrees with the appellants' position. The EPC clearly sets out a requirement that the EPO examines the "who" issue of priority entitlement.”
• The Communiqué: “The second question was how to interpret the expression ‘any person’ in Article  87(1) EPC. Under the established practice both at EPO and national level, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application, allowance being made for successors in title. The Board confirmed this so-called ‘all applicants’ approach.”
• The Board: “The Board is of the same view; the ordinary meaning of this term [‘any person’] in all the language versions is ambiguous. The Board also finds of little assistance the context in which this term is used in the EPC and the Paris Convention.” (r.44)
• “if a group of persons decides together to carry out this act of filing, then they have decided to act as a unity for this purpose, thus implying that the "any person" is this group as such.” (r.50). 
• The Board: “the appellants are faced with over 100 years of consistent case law and practice adopting the "all applicants" approach that they need to show as incorrect. This is a considerable burden” (r.53). (also stating: “In general, the bar for overturning long established case law and practice should be a high one because of the disruptive effects a change may have.").
• The Board, unfortunately, does not identify any of the old court decisions specifically. “the Board has noted the following: very few cases appear to have addressed this issue, and these cases are very old, from the first thirty years of the twentieth century, or very recent, from the last fifteen years or so.” No details are given, only T 0788/05 is mentioned in the decision. Wieczorek p.146-147 refers to relevant old decision starting from KPA 25.10.1917, BPMZ 1917, p.120. As observed by Wieczorek, fn. 185 on p.147, the Ladas in his (American) handbook defended the 'each individual applicant approach'. The OD decision, para. 66.4.2 lists the old court decisions (same as given Wieczorek) as well as the newer decisions.
• The Board's analysis in r.68 regarding  Swiss judgement O2015_009 is remarkable; let me add that Judge Bremi was rapporteur in that Swiss case. 
• The group of 'all applicants' can exercise their priority right only jointly, r.82 implicitly.
•  The patentees had argued that with the 'all applicants' approach, one applicant can create a hostage situation. The Board: “An applicant can progress a patent application before the EPO without the active participation of the other applicants even though they are named in the application.” I'm not sure what the Board means, but the Request for Grant form must be signed by all applicants; R.41(2)(h) and GL A-III,4.2.2:  "If there is more than one applicant, each applicant or his representative must sign the request". 
  
  
• The Communiqué: “A third question concerned whether national law [...] governs the determination of ‘any person’ who has ‘duly filed’ under Article 87(1) EPC. On this point, the Board concluded that the Paris Convention was the law which determines who ‘any person’ is.”
•  The Board, r.116: "The Board thus finds that the "national law" that determines who "any person" is, is in this case, the Paris Convention."
• The decision is frankly confusing by identifying the Paris Convention as "national law" (quotation marks of the Board) while at the same time deciding that "the national law does not govern who is "any person"" according to the headnote.
• The Board, r.115: “The principle of "national treatment" is that a nation treats foreigners in the same way as it treats its own nationals. In the context of the EPC this means that applicants and patentees from non-member states are treated in the same way as applicants and patentees from member states. The appellants are mistaken when they consider this principle requires the EPO to treat applicants and patentees from non-member states in the same way as they would have been treated in their home country.” 
• The Board could have added that it interprets Article 2 Paris Convention. See e.g. also the dissertation of Prof. Schaafsma here (in Dutch). Prof. Schaasma shows that the principle also means that the lex loci protectionis applies. 
• The patentees argue that the missing applicant of the US provisional application was not an inventor of the subject-matter of the PCT application and that therefore this missing applicant somehow was not part of the group of “celui qui aura régulièrement fait le dépôt”, if I understand the decision correctly.
• The difficulty with patentee's argument is that term ‘régulièrement ’ in the phrase ‘régulièrement fait le dépôt’ (duly filed an application) is typically seen as pertaining to formalities requirements for patent applications only (Article 4A(3) PC), not to entitlement (Bodenhausen, Guide, p.36, also p.40)
• The Board turns to the question whether the applicant of the first filing must be entitled to the invention, in order to obtain the priority right. The Board in r.109 cites the travaux of the Paris Convention, meeting of 9 November 1880 to conclude that the Paris Convention “does not require that the "any person" is actually legally entitled to make the filing” (r.110).
• The Board backs this up with a complex argument that "the Paris Convention [is] an integral part of US law" (r.110), because "the Board concludes that the Paris Convention is part of the "supreme Law of the Land" in the US" (r.104). The Board concludes this from interpreting the text of the US Constitution in r.104. I'm surprised that the Board considers itself to be competent to opine on Article VI, clause 2 of the US Constitution in r.104. I'm also not sure how the entire argument about the US constitution fits in with the Board's statement in the headnote that "the national law does not govern who is "any person".
• Said minutes of 9 November 1880 can be found at the WIPO website at https://tind.wipo.int/record/30008?ln=en , page 60-62 of the PDF file. It appears that a text proposal of the Belgian delegate was accepted, however as amended on a proposal by the Swedish delegate to use 'celui qui aura  régulièrement fait ' instead of 'auteur'. The matter of entitlement was indeed discussed but in a nuanced way. Interestingly enough, the Belgian delegate inquired whether the term 'régulièrement' also encompassed the entitlement, but no clear answer seems to have been given by the other delegates ("M. DEMEUR (Belgique) demande si, dans cette phrase: celui qui aura regulièrement effectué le dépot" le mot "régulièrement" porte sur le fond et sur la forme''.).
• The Board: “Article 4A(1) and (2) Paris Convention (and the basically identical Article 87(1) and (2) EPC) do not refer to the "inventor" or the "applicant" for a patent application: they refer to a person who has carried out an act, that of filing a patent application. This is immediately determinable upon the date of the filing - it is the person or persons who carried out the act of filing. " (r.108).
• As a comment, in case of filing by paper, the purely factual natural person who deposits the envelope at the EPO is typically the postman. But I'm not sure if this Board really means that the postman is awarded the priority right, or the patent attorney assistant pressing the "send" button in EPO Online Filing Software. I also note that legal persons do not carry out any physical acts so are never "the person or persons who carried out the act of filing". 
  
  
• The Board: “In the present case the appellants chose the named applicants in a way that did not comply with the well-established practice of the EPO. It is not for the Board to repair such errors, omissions or deliberate choices of a party.” (r.16).
• “As argued by the respondents [opponents], it is this action which the Paris Convention seeks to facilitate, namely, using the legal concept of priority, applicants can be treated as if they had simultaneously filed the same patent application in a multiplicity of member states of the Paris Union. In 1883, when the Paris Convention was originally adopted, (and even today), actually to file the same patent application simultaneously around the world would have presented very considerable, if not insuperable, difficulties. The provisions of the Paris Convention thus certainly assist patent applicants and facilitate the filing of patents around the world, i.e. the object and purpose of the Paris Convention as acknowledged by all parties. The legal fiction of simultaneous filing establishes both substantive (same invention), and formal (same applicants) requirements for a priority right to be acknowledged.” (r.50)
• Summarizing priority as a "legal fiction of simultaneous filing" patent applications in multiple countries is a bit of a simplification in my view. For instance, the 20-year patent term does not run from the priority date. Which might be one of the main reasons for using priority in the first place, instead of filing a PCT application straightaway. 

EPO Headnote

i) The board is empowered to and must assess the validity of a priority right claim as required by Article 87(1) EPC,
ii) the board's interpretation of the expression "any person" in Article 87(1) EPC confirms the long-established "all applicants" or the "same applicants" approach,
iii) the national law does not govern who is "any person" as per Article 87(1) EPC, the Paris Convention determines who "any person" is.

EPO T 0844/18 - link

OD decision discussed here, OD decision text here.

decision text omitted

T 2301/12 - Post 2 - A83 or A84; and late translation of prio doc

Key points

• This second post deals with the insufficiency attack, an attack based on an Article 54(3) document that was shown to critically lack priority in appeal, and the remittal of the case because of a late challenge to the priority of the patent. 
• Regarding the insufficiency attack: "The question would arise whether this would justify an objection of insufficiency of disclosure under Article 100(b) EPC 1973 or an objection that the claims are not supported by the description under Article 84 EPC 1973. The Board accepts that the distinction is often rather subtle, and the matter has to be judged having regard to the facts of the particular case in question." 
• "The [opponent's] argument is effectively that claim 1 has been drafted in such a way that it does not reflect, indeed that it excludes, the teaching of the description and drawings. In the Board's view, this objection, which is chiefly focused on the way in which the invention has been presented in the claims, must be seen as an objection that the claims are not supported by the description within the meaning of Article 84 EPC 1973, rather than an objection that the invention is insufficiently disclosed." 
• The Board distinguishes the case from T 409/91, because therein the most preferred particle sizes (according to the patent) could not in fact be achieved. The present objection is against embodiments which fall in a literal sense within the scope of claim 1 but for which "it would be perfectly clear to the skilled person that this is not what the invention is about". The Board considers T 1018/05 more relevant, wherein "values of the parameter not obtainable in practice would not be regarded by the skilled person as being covered by the claims and thus could not justify an objection of insufficiency of disclosure".
• Then the novelty attack. The OD had considered the claims not novel over K4, an Article 54(3) citation. In appeal, patentee submits a translation of the priority document of K4, showing that the priority document lacks the critical feature. Hence, the novelty destroying embodiment of K4 lacks priority and can not be cited.
• Opponent disputed admissibility of the translated priority document K4PT in appeal. The Board: "it must be borne in mind that it was the opponent which introduced document K4 into the proceedings together with the argument that the embodiment comprising the water leakage sensor constituted prior art under Article 54(3) EPC. Whilst it is regrettable that the documents K4P/K4PT were not filed in the proceedings before the Opposition Division, the responsibility in this case does not only fall on the proprietor; it is also incumbent on an opponent asserting that a document constitutes novelty-destroying prior art under Article 54(3) EPC to ascertain and accurately present the full facts in this respect." 
• However, then the opponent made an attack to priority of the patent. "In the oral proceedings [before the Board], the opponent asserted for the first time that document K24 - cited by the opponent during the appeal procedure - represented the "first application" within the meaning of Article 87(1) EPC, and that consequently the priority claim of the opposed patent is invalid." The Board then remits the case, also for a decision about the admissibility of K24, and for the OD to consider whether the validity of the priority of the patent is relevant at all. 

EPO T 2301/12 - link

8. Third auxiliary request: Article 100(b) EPC

8.1 The exposure apparatus of claim 1 of the third auxiliary request comprises:

"a detecting device arranged to detect whether there is a liquid on and in contact with the upper surface of the base member".

8.2 The first argument of the opponent is that this wording (present tense: "whether there is a liquid") defines a detecting device with the capability of determining, at any instant of time, whether liquid is present on the surface or not, i.e. it effectively defines real time detection. Furthermore, "whether there is a liquid" defines the capability of determining whether liquid in any amount is present on the surface.

It is not disputed that numerous configurations of an exposure apparatus having a liquid detecting device are disclosed in the description and drawings in a way which would allow the skilled person to put them into practice. The argument of the opponent is that the wording of claim 1 means that only arrangements which are capable of real time detection and the detection of very small amounts of liquid are claimed, whereas none of the arrangements disclosed in the description and drawings would be capable of either of these types of detection. The invention as defined in claim 1 is therefore insufficiently disclosed.

T 0330/14 - A kind of inescapable priority trap

Key points

• In this case, priority was claimed from US provisional, E10 which is identical to the application as filed. However, the applicant had filed a second US provisional E11, two day before E10, and forming the basis for Euro-PCT application E2. The content of the two priority documents is not exactly the same, but the applications are related. According to the opponent, either the present claims lack basis in the application as filed, or the claims have basis in the application as filed, and are then equally disclosed in E11, making E11 the "first application", the priority invalid and E2 a novelty destroying Article 54(3) prior right. 
• The Board recalls that " the Enlarged Board has stressed the importance of applying this "gold standard" as a uniform concept of disclosure with reference to Articles 54, 87 and 123 EPC". 
• The Board also states that it "has some sympathy with the [proprietor's] argument that a skilled person would not directly and unambiguously derive the subject-matter of claim 1 of the main request from E11 [because this involves a selection from three lists]. However, applying the gold standard to the disclosure of the application as filed the board comes to the conclusion that, as explained below, the subject-matter of claim 1 of the main request does not comply with Article 123(2) EPC" because it involves the selection of four features from the application as filed.

EPO T 0330/14 - link

III. The opposition division held that the subject-matter of claim 1 of the main request and the eleven auxiliary requests complied with Articles 123(2), 83 and 84 EPC.

Regarding Article 123(2) EPC, the opposition division found that the subject-matter of claim 1 of the main request and of all auxiliary requests was directly and unambiguously derivable from the application as filed, considered as a whole. Since the application as filed was identical to the priority document E10, the claimed subject-matter was directly and unambiguously derivable from E10 as well.

Reasons for the Decision

1. In the statement setting out the grounds of appeal, the appellant [patentee] argued that the method defined in claim 1 of the main request had been disclosed for the first time in E10 (the priority document of the patent in suit) and not in E11 (the priority document of E2). Therefore, the subject-matter of the claims of the main request could validly claim priority from E10, with the result that the relevant date for assessing novelty was 19 March 2004. Under those circumstances, E2 was not state of the art under Article 54 EPC.

T 0404/13 - First filing and transfer

Summary

Claim 1 of the main request has a disclaimer. In this case, the allowability of the disclaimer depends on the date of transfer of the priority application of D1.

At the outset, the facts of the case are similar to  T 788/05 (not cited in the decision). In that decision, the Board held:
In the case of D1 in which two co-applicants (Terumo and Tokin) are present, this means that the priority right belongs simultaneously and jointly to the two applicants, who thus constitute a legal unity unless one of them decides to transfer his right to the other applicant, who then becomes his successor in title and this before the filing of the later application. Since no evidence for such a transfer was submitted to the Board, D1, independently of the question of the same invention, could only serve as a basis for claiming a priority right for the filing of a later application designating both applicants. But since the present application was only filed by one applicant (Terumo), D1 could not represent the "first application" within the meaning of Article 87(1) EPC.

The patent in suit claims as priority date 16 April 2003 based on priority application DE '489.3 and has filing date 6 April 2004.
D1 is a PCT application with publication date 3 July 2003 and filing date 23 December 2002.

Claim 1 of the patent has a disclaimer which is only allowable if D1 is a prior right. D1 forms a prior right (Article 54(3) EPC) only if the priority claim of the patent is valid, otherwise is it prior art. This requires that the priority application DE '489.3 is the first filing. However, D1 claims the priority of a German priority application DE ' 586.9, wherein the anticipating embodiment was also disclosed. This application was transferred to the applicant of the patent in suit before or after the filing date of the priority application DE '489.3 of the present application. The transfer was entered into the German patent register only on 1 July 2003, but the takeover of (the relevant patent portfolio of) the company filing DE ' 586.9 (and D1) by the present applicant had take place already in 2002.

It is not in dispute that the patentee can not benefit of Article 87(4) EPC.

The patentee argues that at the claimed priority date, there was no identity of applicants between DE '489.3 and DE ' 586.9, such that the priority application DE '489.3 is the first filing for the invention.

It does not seem to have been disputed that if the priority right of DE ' 586.9 was transferred before the filing of DE '489.3, the priority is invalid.

The Board holds that de decisive moment is the transfer of the actual right and not the entry into the register of the transfer, because the registration is not constitutive for the transfer.
Moreover, the date of registration of the transfer is no evidence of the actual date of transfer.

The Board note that, as a rule, in case of take over of business units of a company, the patent applications are transferred simultaneously with the business assets. A further indication of the transfer is that DE '489.3 refers to DE ' 586.9 and has to a large extent identical text.

The Board then decides that the burden of proof lies with the patentee to show ("glaubhaft zu machen") that the transfer of DE ' 586.9 had occurred only after the claimed priority date.
As a note, this decision gives raises to some interesting questions about the standard and burden of proof. Possibly, the Board had in effect found that the opponent had presented sufficient evidence for an early transfer and the patentee was given the burden for a rebuttal.

The patentee had not provided such evidence. Hence, the transfer is assumed to have been effected before the priority date, and therefore DE ' 586.9 is considered as the first filing and the priority date can not be validly claimed. Hence, D1 is prior art (Article 54(2) EPC), the disclaimer is not allowable (G 1/03) and the main request does not comply with Article 123(2) EPC.

EPO  T 0404/13 - link

Entscheidungsgründe

[...]

Hauptantrag - Änderungen (Artikel 123(2) EPÜ)

6. Der Gegenstand des Anspruchs 1 wurde gegenüber der ursprünglichen Fassung, sowohl durch die Aufnahme von ,,positiven Merkmalen", als durch zwei Disclaimer geändert. Es ist nicht strittig, dass diese zwei Disclaimer in der ursprünglich eingereichten Fassung der Anmeldung nicht offenbart sind. Somit ist es zu überprüfen, ob diese Disclaimer die in den Entscheidungen der Großen Beschwerdekammer G 1/03 und G 2/03 festgelegten Kriterien für ihre Zulässigkeit erfüllen.

T 0050/10 - Priority and sequences

Key point

• The Board confirms that disclosure of a DNA sequence (with indication of the open reading frame ORF) can provide priority for a claim for the (corresponding) amino acid sequence.
• The opponent had submitted that "The single disclosure of an ORF at one single position in the priority document, in contradiction to the remaining disclosure of the whole document, could not be regarded as a direct and unambiguous disclosure." The Board does not comment specifically on this argument.

EPO T 50/10 - link

Reasons for the Decision

[...] Article 87 EPC - Priority right

9. There is a dispute between the parties about whether the subject-matter of claim 1 can validly claim a right of priority from the earlier application US 60/073 763 filed on 5 February 1998.

10. According to Article 87 EPC a European patent application may validly claim the right of priority from a previous first application if both relate to "the same invention". The concept of "the same invention" expressed in Article 87 EPC has been interpreted by the Enlarged Board of Appeal in decision G 2/98 (OJ EPO 2001, 413, point 9 of the reasons) as meaning subject-matter which the person skilled in the art can derive directly and unambiguously, using common general knowledge, from the previous application as a whole.

11. In the present case, the issue is thus whether the 655 amino acid polypeptide having the sequence of SEQ ID NO: 1, that is the subject-matter of claim 1, can be directly and unambiguously derived from application US 60/073 763.

12. The board notes that the application US 60/073 763 does not contain a discrete sequence identical to SEQ ID NO: 1 of the patent. However in Example 6 there is a disclosure of a "cDNA insert [...] 2418 bp in length as in Figure 2C or SEQ ID NO: 2 [with] a long ORF that began at position 239 and ended with the stop codon TAA at position 2204-06." (see page 21, lines 17 to 22). Translation of this ORF yields a protein of 655 amino acids which is identical to SEQ ID NO: 1 as mentioned in the patent - it being part of the basic technical knowledge of the skilled person that translation of a nucleic acid sequence into the corresponding amino acid leads to a defined amino acid sequence. Furthermore, the translated amino acid sequence of this region is included in the longer sequence shown in Figure 2A of the priority application. Thus, the board is satisfied that, given the information about the positions of the start and stop codons of the ORF concerned, the skilled person can derive the polypeptide having SEQ ID NO: 1 as claimed, directly and unambiguously, using common general knowledge, from application US 60/073 763 as a whole.

13. It follows from this that the subject-matter of claim 1 and of the dependent claims 2 to 8 and 10 to 16 validly claims the priority date from application US 60/073763, this date being 5 February 1998.

14. Since documents D3 to D5 are all published after that date, all objections of lack of novelty and lack of inventive step made on the basis of these documents must fail.

15. Hence, the board is satisfied that the requirements of Articles 54 and 56 EPC are fulfilled.