2.4. Rebuttable presumption of entitlement to claim priority
2.4.1 Introduction
In G 1/22 and G 2/22 the Enlarged Board concluded that there is 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 is entitled to claim priority. This presumption is justified in view of the purpose of the priority rights, the lack of formal requirements for the transfer of priority rights and the presumed common interest of the priority applicant and the subsequent applicant (G 1/22 and G 2/22, points 101 et seq. of the Reasons and point I of the Order). The considerations leading to the presumption of priority entitlement apply to any case in which the subsequent applicant is not identical with the priority applicant but receives the support of the priority applicant required under Art. 88(1) EPC (G 1/22 and G 2/22, point 107 of the Reasons). See also T 2719/19 of 20 November 2023 date: 2023-11-20, T 2360/19, T 2516/19, T 2689/19, T 521/18 of 7 March 2024 date: 2024-03-07, T 2224/21, T 2643/16 of 3 June 2024 date: 2024-06-03, T 1975/19, T 419/16 of 24 June 2024 date: 2024-06-24 in this chapter II.D.2.5.3, II.D.2.5.4 and II.D.2.6.1.
According to the Enlarged Board, the presumption should be rebuttable since in rare exceptional cases the priority applicant may have legitimate reasons not to allow the subsequent applicant to rely on the priority (G 1/22 and G 2/22, points 106 to 108 of the Reasons and point II of the Order).
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 with the subsequent applicant(s). See in this chapter II.D.2.5.1 and II.D.2.6.1.
The presumption of priority entitlement and its rebuttal are, like the priority entitlement in general (see in this chapter II.D.2.3), subject to the autonomous law of the EPC only. There is no room for the application of national laws on legal presumptions and their rebuttal. It cannot be excluded, however, that in the context of the rebuttal of the presumption national laws need to be considered as well. For example, the existence of legal entities being parties in transfers of priority rights may be relevant and may need an assessment under national laws (G 1/22 and G 2/22, points 111 and 133 of the Reasons; for the application of national law to determine whether a legal entity exists, see G 1/13 (OJ 2015, A42) summarised in chapter V.A.2.4.3d)). For case law prior to G 1/22 and G 2/22 where national law was considered, see in this chapter II.D.2.7.2.
If the requirements under Art. 88(1) EPC are not fulfilled, the subsequent applicant is barred from claiming priority for this reason alone. The fulfilment of these procedural requirements is not covered by the presumption. This is reflected in the Order in G 1/22 and G 2/22 where compliance with Art. 88(1) EPC and the corresponding Implementing Regulations is set as a condition for the rebuttable presumption of priority entitlement. (G 1/22 and G 2/22, point 132 of the Reasons and point I of the Order).
- T 0781/23
In T 781/23 the opposition division had held that the patent was entitled to claim priority from the priority document, a US provisional patent application filed in the name of the inventors, with the consequence that documents D12 and D13 did not belong to the state of the art according to Art. 54 EPC. The appellant (opponent) argued that the applicant for the patent in suit was not the successor in title of the applicants for the priority document.
The board recalled that, in accordance with decision G 1/22, under the autonomous law of the EPC there is a rebuttable presumption that the applicant claiming priority is entitled to claim priority. Furthermore, the presumption of priority entitlement applies to any case in which the subsequent applicant is not identical to the priority applicant but receives the support of the priority applicant required under Art. 88(1) EPC. Thus, the presumption applied in the case in hand. The board explained that the existence of a presumption of validity implied that it was the burden of the party challenging the applicant's entitlement to priority to prove that this entitlement was lacking. Thus, the appellant's argument that it was on the proprietor to demonstrate that it had the right to claim priority had to fail..
Also referring to G 1/22, the board stated that the presumption was rebuttable, for example, in cases of bad faith behaviour of the subsequent applicant or as a result of other proceedings such as litigation before national courts concerning title to the subsequent application. It further stated that the presumption of entitlement existed on the date on which the priority was claimed and the rebuttal of the presumption also had to relate to that date.
According to the board, in the case at hand, the appellant had not provided any such evidence to rebut the presumption of priority entitlement. Document D19 was an assignment by the inventors to the applicant of the patent in suit and could not rebut this presumption. The further evidence provided relied on requirements of national law, such as the distinction under French law between the right to the invention and the right to the priority claim. The board was of the view that, following the presumption of priority entitlement existing under the autonomous law of the EPC, considerations based on national law became irrelevant.
In light of the foregoing, the board came to the conclusion that the patent was entitled to the priority claimed.