EPO competent to assess priority entitlement of patent applicants

Harry Muttock, patent law expert at Pinsent Masons, said the EBA’s decision (59 pages / 580KB PDF) reversed the EPO’s historically strict approach to requiring applicants to show they had a right to claim priority before filing a later application. “The onus has now reversed from being on the applicant to show they are formally entitled to priority to being on the opponent or examining division to show, with specific facts, that there are serious doubts,” he said.

In the same decision, the EBA also confirmed that patent applicants are entitled to a ‘rebuttable presumption’ during EPO priority entitlement assessments. This means that, when an applicant claims priority for a European patent application based on an earlier-filed application, the EPO must presume that the priority claim is valid and that the later European patent application is entitled to the claimed priority date.

This presumption is not absolute, however, and can be challenged or “rebutted” by third parties – or the EPO itself – if there is evidence or information that suggests the priority claim may not be valid. Muttock said: “The EBA’s decision makes it clear that a joint later filing claiming priority to an application in the name of at least one of the applicants will enjoy a ‘rebuttable presumption’ of an implied agreement between the joint applicants.”

The concept of priority in patent applications allows an applicant to benefit – or ‘claim priority’ – from the earlier filing date of another patent application. This means that the patent may not be invalidated by any other filings or ‘prior art’ in between those two dates. In practice, it allows a patent applicant to file an initial application at their local patent office and subsequently file a second application at a different patent office. The second application would then be treated as if it was filed on the same day as the first application by claiming priority to it.

However, complexities can arise when the applicant of the second application is different from the applicant of the first application. This is more often seen in cases involving US patent applications because it is common there for an inventor to file the initial application, then assign it to their employer, which subsequently files the second application.

The referral to the EBA originated from a question regarding the EPO’s competence to assess an applicant’s entitlement to claim priority. The second aspect of the referral dealt with a situation where inventors file a US patent application, which is then used as a priority application for a later Patent Cooperation Treaty (PCT) application – which allows inventors to seek protection for their inventions in multiple countries through a single filing.

In the PCT application, the inventors are only named as applicants for the US portion, while other legal entities are named for European patent protection. The EBA was asked to determine whether the co-applicant of the PCT application, who differed from the US inventors, could validly rely on the priority right under Article 87(1) of the EPC.

Article 87(1) of the EPC states that anyone who has duly filed a patent application, or their successor in title, will enjoy a right of priority for filing a European patent application for the same invention within twelve months of the initial filing date.

The EBA ruled that the EPO was competent to assess an applicant’s entitlement to priority, but distinguished between the right to file a European patent application and the right to claim the priority date for that application. While the EPO was not competent to assess the applicant's entitlement to the patent application itself under Article 60(3) of the EPC, this provision did not apply to the right of priority referenced in Article 87(1) of the EPC.

Additionally, the EBA extended the rebuttable presumption, endorsing the joint filing of a PCT application as sufficient evidence of an implied agreement on the shared use of the priority right, unless substantial indications to the contrary exist.

Muttock said the ruling appeared to follow a similar approach taken in UK courts recently, citing the fact that the approach of the High Court in the 2017 Accord v RCT case was referenced several times in the EBA’s decision. He added: “On its face, however, the new rebuttable presumption in the EBA’s decision may extend even further than the UK’s approach to situations. 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.”

“Some have speculated that this means there is a presumption of validity in all circumstances – but in practice this will likely mean less administrative burden prefiling for a PCT application for applicants who would previously scramble to get assignments sorted in the 12 months following a first filing,” Muttock said.

He added: “However, this reduced pressure to have everything meticulously organised will likely lead to more frequent – albeit also more onerous – formal objections to priority in proceedings before the EPO in attempts to rebut the presumption for cases where there is real doubt regarding the right to claim priority.”