2.5.4 Application of G 1/22 and G 2/22 by the boards – joint applicants for the subsequent application

G 2/22 was first applied in T 2719/19 of 20 November 2023 date: 2023-11-20, the referring case in G 2/22 (summarised in this chapter II.D.2.5.3). The board recalled that 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 and that this presumption also applied in the factual situation of the case in suit. Moreover, the Enlarged Board had ruled that in the situation of the case in hand, where the PCT application was jointly filed by party A (as inventors and as applicants for the US only) and party B (as applicants for all other designated States), and claimed priority from an earlier patent application designating party A as the applicant, the joint filing implied an agreement between party A and party B, allowing party B to rely on the priority, unless there were substantial factual indications to the contrary. According to the board, no substantial factual indications to the contrary were mentioned in the decision under appeal nor was the board aware of any. The board concluded that the appeal was allowable (the priority was valid) and remitted the case to the examining division with the order to grant a patent.

G 1/22 and G 2/22 has also been applied in the context of patent applications cited as prior art documents. In T 521/18, an appeal by the patent proprietor against the decision of the opposition division to revoke the patent for lack of novelty of the subject-matter of claims 1 and 5 of auxiliary request 3 (main request on appeal) over the disclosure of document D4. The opposition division had held that D4, filed in the name of a corporation (designated for the States outside US) and ten inventors/applicants (designated for the US only) was entitled to priority from application P4 (D4a) filed in the name of seven out of the ten inventors/applicants of D4. The board held that the strong presumption of entitlement applied in the case in hand. Such presumption could only be rebutted in the presence of "serious doubts" based on facts or clear indications to the contrary. In the board’s opinion the evidence submitted by the appellant was not suitable to rebut the presumption. See also T 518/22.

See also T 2224/21, reported in this chapter II.D.2.4.3, T 2643/16 of 3 June 2024 date: 2024-06-03 and T 2132/21.