2.6. Not all applicants for priority application named in subsequent application
2.6.1 Rebuttable presumption applies
Prior to G 1/22 and G 2/22 the opposition divisions and the boards had applied the "all applicants" (or "same applicants") approach in the situation where not all applicants for the priority application are named in the subsequent application. See in particular T 844/18 in this chapter II.D.2.7.1, where the board found the priority claim to be invalid because not all of the applicants of certain US provisional applications from which priority was claimed were named as an applicant in the application leading to the patent in suit.
In T 2360/19 the patent was based on a European patent application which was a divisional application of an earlier European patent resulting from an international PCT application. This PCT application claimed priority from 12 US provisional applications (P1 to P12). The opposition division, applying the so-called "all applicants" approach, had found that priority was not validly claimed from P1, P2, P5 and P11 because these had been filed by joint applicants (Party A1 or Party A2 being among them) and neither Party A1 nor Party A2 were named as applicants in the PCT application (and consequently in the patent in suit). This had led to the revocation of the patent for lack of novelty. The patent proprietors (appellants) had appealed the decision of the opposition division.
Applying G 1/22 and G 2/22, the board recalled that the presumption of entitlement to priority applied to any case in which the subsequent applicant was not identical with the priority applicant, and thus also to a plurality of co-applicants for the priority application regardless of the extent to which that group overlapped with the co-applicants of the subsequent application. This was the situation in T 2360/19 and thus the presumption of a validly claimed priority applied. Relying on documentation pertaining to an inventorship dispute, the opponents argued that the appellants had not provided evidence that they were entitled to the priority rights. According to the board, however, the presumption in G 1/22 and G 2/22 stated that the appellants did not have to provide such evidence, but the opponents had to rebut the presumption (see in this chapter II.D.2.4.3). As there was no evidence to rebut the presumption, the board found the priority claims to be valid. See also T 2516/19 and T 2689/19.
- 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.