2.5.5 Implied agreement

In G 1/22 and G 2/22 the Enlarged Board concluded that in the absence of substantial factual indications to the contrary, the joint filing of a PCT application by party A and party B sufficiently proved that the parties had entered into an implied agreement allowing party B to rely on the priority (G 1/22 and G 2/22, point 125 of the Reasons, point II of the Order).

According to the Enlarged Board, since the considerations leading to this conclusion not only apply in the context of PCT applications, the concept and the conditions for an implied agreement equally apply to co-applicants directly filing a subsequent European application if at least one of the co-applicants was an applicant for the priority application. They do not apply, however, to co-applicants for the priority application who are not involved in the subsequent application (see in this chapter II.D.2.6.2).

To put into question the implied agreement, evidence would be needed that an agreement on the use of the priority right has not been reached or is fundamentally flawed. Factual indications putting into question the implied agreement have to be of a substantial nature and have to be presented by the party questioning the implied agreement. Moreover, the implied agreement is to be assessed under the autonomous law of the EPC, which does not foresee any formal requirements for the transfer of priority rights (G 1/22 and G 2/22, point 125 and 126 of the Reasons). See T 2719/19 date: 2023-11-20 in this chapter II.D.2.5.3.

In T 2132/21 the patent claimed priority from a US application filed in the name of four inventors. In the filing of the PCT application leading to the patent, the four inventors were named as applicants for the US only and a corporation was named as applicant for all other states. The appellant (opponent) argued that the priority was not valid because there was no evidence that the priority rights had been transferred to the respondent before the PCT application was filed. Applying G 1/22 and G 2/22, the board held that the joint filing of the PCT application, in the absence of evidence to the contrary, was sufficient proof of an implied agreement on the joint use of the priority right.