2.5.3 "PCT joint applicants" in G 1/22 and G 2/22

The second question referred to the Enlarged Board in G 1/22 and G 2/22 concerned a special situation occurring where a party, typically the inventor(s), files a US priority application (also in the form of a provisional application) which is then used as priority application for a later PCT application designating one party (typically still the inventor(s)) for the US only and another party (typically the employer of the inventor(s)) for regional European patent protection. Before the "America Invents Act" of 2011 entered into force, only the inventor(s) could be applicants in a US patent application. The priority application underlying the referral (filed in 2004) had to be filed by the inventors under the then applying laws.

In the two cases underlying the referral in G 1/22 and G 2/22, i.e. T 1513/17 and T 2719/19, the priority claim had been found to be invalid by the opposition division and the examining division respectively. This had led to the revocation of the patent (T 1513/17) and the refusal of the application (T 2719/19) for lack of novelty. The application on which the patent was granted in T 1513/17 (and from which the application derived in T 2719/19) was filed as an international application under the PCT (the "PCT application"). It named (i) the three inventors as applicants for the US only and (ii) other (legal) persons including the appellant ("Party B") as applicants for all other designated States. The PCT application claimed priority from a US provisional application filed in the name of the three inventors. The opposition division and the examining division found the priority claim to be invalid because only one of the three inventors had assigned the priority right to Party B prior to the filing of the PCT application. Thus, intermediate publications were novelty-destroying.

Even if the "joint applicants" approach had been acknowledged by the boards for regular European patent applications (see in this chapter II.D.2.5.2), the use of this approach for a PCT application with different applicants for different designated territories had been questioned in the referring decision. The referring board referred two questions to the Enlarged Board. For Question I, concerning the EPO’s competence to assess priority entitlement, see in this chapter II.D.2.2.1. Question II was as follows:"(II) If question I is answered in the affirmative

Can a party B validly rely on the priority right claimed in a PCT application for the purpose of claiming priority rights under Article 87(1) EPC in the case where:

1) a PCT application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and

2) the PCT application claims priority from an earlier patent application that designates party A as the applicant and

3) the priority claimed in the PCT application is in compliance with Article 4 of the Paris Convention?".

The Enlarged Board held that the rebuttable presumption that the applicant claiming priority in accordance with Art. 88(1) EPC is entitled to claim priority (see II.D.2.4.1 above) also applies 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). Moreover, the Enlarged Board endorsed the concept of an implied agreement (see in this chapter II.D.2.5.5). According to the Enlarged Board, a general decision on the viability of the "PCT joint applicants" approach was not needed. The concept of an implied agreement should allow an assessment leading to the same result as the "PCT joint applicants" approach in most cases (G 1/22 and G 2/22, points 118 to 121 of the Reasons). For the application of this decision by the referring board in T 2719/19 of 20 November 2023 date: 2023-11-20, see in this chapter II.D.2.5.4 (the appeal was withdrawn in T 1513/17).