G1/22 and G2/22

Recent landmark decisions issued by the High Board of Appeal (EBoA) at the European Patent Office (EPO)

For the priority claim to be valid, it is necessary that the applicant(s) of the new patent application have the right of priority of the corresponding priority application.
In general, this requirement is not a problem in practice in most countries because the priority right belongs, by default, to the applicant of the priority application, and this usually coincides with the applicant of the new application.

But what happens if the applicant(s) of the new application do not coincide with the applicant(s) of the priority application?

In this regard, the High Board of Appeal (EBoA) of the European Patent Office (EPO) has recently published the decision on the consolidated cases G 1/22 and G 2/22 in which the following questions concerning the right of priority are answered:

I. Does the European Patent Convention (EPC) confer competence on the European Patent Office to determine whether a party validly claims to be a successor in title within the meaning of Article 87(1)(b) of the European Patent Convention?
Answer: The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
Under the autonomous law of the EPC, there is a rebuttable presumption that the applicant claiming priority is entitled to claim priority provided that priority is claimed in accordance with Article 88(1) EPC and the relevant Implementing Regulation.

II. Can a party B validly rely on the right of priority claimed in a PCT application for the purpose of claiming priority rights under Article 87(1) EPC
1) a PCT application designates party A as applicant only for the U.S. and party B as applicant for other designated States, including regional European patent protection, and
2) the PCT application claims the priority of an earlier patent application designating party A as applicant, and
3) the priority claimed in the PCT application is in accordance with Article 4 of the Paris Convention?
Answer: The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical to the subsequent applicant(s).

In a situation where a PCT application is filed jointly by parties A and B,
(i) party A being the owner in one or more States and party B being the owner in one or more other State(s), and
(ii) claiming priority to an earlier patent application designating party A as applicant,
the joint filing implies an agreement between parties A and B that allows party B to claim priority, unless there is substantial factual evidence to the contrary.

The EPO EBoA confirms that the EPO is competent to assess entitlement to priority and that there is a rebuttable presumption that an applicant claiming priority in accordance with the formal requirements of the EPC is entitled to do so.

If you have questions about the priority right, or any other IP-related topic, please do not hesitate to contact us, we will be happy to be of assistance.

Full text of the decision: