Zusammenfassung von EPC2000 Art 087(1) für die Entscheidung T0419/16 vom 24.06.2024

In T 419/16 of 24 June 2024 the application on which the European patent was granted (the "application") was filed as a PCT application on 15 February 2005 (the "PCT application"). It named (i) parties A1, A2 and A3 as inventors and applicants for the United States of America (US) and (ii) corporation B1 as applicant for all other designated States. Party A4 was added under R. 92bis.1 PCT as applicant and inventor for the US. The PCT application claimed priority from a US provisional patent application filed on 17 February 2004 in the name of A1, A2 and A3, the inventors (the "priority application"). The board summarised the matters decided by it in its interlocutory decision T 419/16 of 3 February 2022. On novelty, it had noted that the disclosure in document D1, published after the priority date but before the filing date of the patent, would, in the absence of a valid priority, anticipate the subject-matter of claim 1 of auxiliary request 1. The board had decided that the subject-matter of claims 1 and 2 of auxiliary request 1 related to the same invention as disclosed in the previous application in the sense of Art. 87(1) EPC. The appellants had objected to the validity of the claimed priority querying whether a valid transfer of the right to claim priority from the priority application had taken place prior to the filing of the PCT application. Because the board's decision on this issue hinged on an answer to questions referred to the Enlarged Board of Appeal (the Enlarged Board) in consolidated cases G 1/22 and G 2/22, the board had decided to stay the proceedings until a decision was issued by the Enlarged Board. The board recalled that in G 1/22 and G 2/22 the Enlarged Board had decided that entitlement to claim priority (and any related assignments of priority rights) should be assessed under the autonomous law of the EPC. Furthermore, the Enlarged Board had decided that there was a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations was entitled to claim priority. According to the board, this presumption applied in the factual situation of the case at hand. Moreover, in the situation where the PCT application was jointly filed by parties A and B, (i) designating party A (here A1, A2 and A3) as inventors and applicants for the US only and party B (here B1) for all designated States except the US, and (ii) claiming priority from an earlier patent application (here the priority application) designating party A as the applicant, the joint filing implied an agreement between parties A and B, allowing party B to rely on the priority, unless there were substantial factual indications to the contrary. Appellant-opponent 5 argued that contrary to the opposition division's finding in the decision under appeal, there had been no valid transfer of the priority right prior to the filing of the PCT application. Appellant-opponent 5 based this objection on the reason that the transfer had not been proven by the respondent in a formal way. In the board's opinion, in view of the Enlarged Board's decision that the joint filing of the PCT application implies an agreement between parties A and B, allowing party B to rely on the priority, the aforementioned objection could not succeed because there was no requirement under the EPC that a transfer of the priority right be proven in a formal way. Furthermore, there were no substantial factual indications brought forward by the appellants that could lead to the conclusion that the joint filing of the PCT application did not imply an agreement between the applicants of the priority application and corporation B1 as the co-applicant of the subsequent PCT application (for all States other than the US). Thus, the presumption of entitlement to priority was not rebutted, and the priority claimed from the priority application as regards the subject-matter of claims 1 and 2 was valid.