2.4. Rebuttable presumption of entitlement to claim priority
2.4.3 Reversal of the burden of proof and strong presumption
The rebuttable presumption involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant’s entitlement to priority has to prove that this entitlement is missing. If there is a strong presumption, the hurdle for rebutting it is higher than in the case of a weak presumption (G 1/22 and G 2/22, point 110 of the Reasons, citing T 63/06).
The presumption that the subsequent applicant is entitled to the priority right is a strong presumption under normal circumstances since the other priority requirements (which establish the basis for the presumption of priority entitlement) can usually only be fulfilled with the consent and even cooperation of the priority applicant (G 1/22 and G 2/22, point 110 of the Reasons). The party challenging the entitlement can thus not just raise speculative doubts but must demonstrate that specific facts support serious doubts about the subsequent applicant’s entitlement to priority. See T 2719/19 of 20 November 2023 date: 2023-11-20, T 2360/19 of 5 March 2024 date: 2024-03-05, T 521/18, T 2643/16 of 3 June 2024 date: 2024-06-03 and T 419/16 of 24 June 2024 date: 2024-06-24 in this chapter II.D.2.5.4 and II.D.2.6.1. See also T 1698/21.
In T 2224/21 the appellant (opponent) challenged the applicant’s entitlement to priority and argued that, because the relevant information relating to the disputed transfer was non-public information in the possession of the respondent (patent proprietor), the burden of proof lay with the respondent. Applying G 1/22, the board held that a rebuttable presumption of priority entitlement applied. The appellant had only raised speculative doubts not supported by evidence. On the contrary, the evidence presented by the respondent reinforced the strong presumption. In this context, it was not apparent to the board why the alleged failure by the respondent to provide written evidence in the form of commercial contracts or agreements between the parties should go to the detriment of the respondent. Moreover, the appellant was not in a position in which any evidence for rebutting the presumption of entitlement would only be at the hands of the respondent. The board concluded that the respondent was entitled to the priority.
According to the board in T 1975/19, considering that G 1/22 establishes a strong presumption of validity and places the burden on the opponents to prove the contrary, the lack of evidence of a transfer of the right to priority to the subsequent applicant could not be equated with a proof that this transfer did not take place. Absent any further circumstances, evidence of a transfer of the right to priority to a third party other than the subsequent applicant, did not amount either to a proof that this right to priority was not, in turn, further transferred to the subsequent applicant. Indeed, as explained in G 1/22, the presumption also applies if the title to the subsequent application has not been acquired from the priority applicant but from a third party having the right to the invention in the respective territory. This presumption applied all the more in the case at hand as all parties involved were legal persons belonging to the same group and their employees.
See also T 521/18 and T 518/22 in chapter II.D.2.5.4, where the board applied the presumption to patent applications cited as prior art.
- T 0098/23
In T 98/23 the patent related to a CRISPR-Cas 9 composition for therapeutic use. It was based on a European patent application resulting from an international PCT application claiming priority from 13 earlier US applications including P1, P2, P3, P5 and P13. In its decision revoking the patent, the opposition division had found that formal entitlement to priority from P1, P2, P5 and P13 had not been validly claimed because not all applicants of these priority applications were named in the subsequent application leading to the patent. Thus, novelty and inventive step were examined based only on documents published before P3, in particular D10. The subject-matter of claim 1 of the patent as granted was found to lack novelty over the disclosure of D10.
References to G 1/22 in this abstract should be understood as referring to both G 1/22 and G 2/22.
The board explained that, as in T 844/18, T 2360/19, T 2516/19 and T 2689/19, the issue was whether Mr Marraffini as one of the claimed inventors or The Rockefeller University as his successor in title, had given their consent to the subsequent filing of the patent application in question. A further issue was whether The President and Fellows of Harvard College had given their consent to the subsequent filing of the patent application. The presumption, following G 1/22, is that they did. This presumption may be rebutted.
The board recalled that according to G 1/22, 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" applied to any case where the subsequent applicant was not identical with the priority applicant. Also ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application were valid. The presumption of an implied agreement was rebuttable. To question the implied agreement, evidence was thus needed that such agreement had not been reached or was fundamentally flawed.
In the board's opinion, there was no evidence that rebutted the presumption in this case, rather there was evidence on file that supported the presumption. The inventorship dispute between Mr Marraffini/The Rockefeller University and Mr Zhang/The Broad Institute Inc/Massachusetts Institute of Technology had been settled in 2018 by decision of an arbitrator. Applying G 1/22, the settlement by arbitration contained (and confirmed that there was), at least, an implicit agreement nunc pro tunc. Thus, the presumption of entitlement to priority was on the earliest date on which priority was claimed, 12 December 2012. G 1/22 explicitly also stated 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". As being retroactive, the at least implicit transfer agreement by way of the settlement of the inventorship dispute related to this date, and confirmed the presumption of entitlement to exist on this date.
As to whether The President and Fellows of Harvard College had given their consent, no evidence had been filed by the opponents either establishing that the real priority right holder did not allow the subsequent applicants to rely on the priority (see also T 1975/19).
The board concluded that entitlement to priority had been validly claimed in view of G 1/22. The case was remitted to the opposition division for a fresh assessment of the patentability requirements of the main request (the patent as granted), based on a valid priority entitlement to P1.