Résumé de EPC2000 Art 088(1) pour la décision T0521/18 du 07.03.2024

T 521/18 was 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 prior art document D4 was a Euro-PCT application, filed in the name of a corporation (designated for the States outside US) and ten inventors/applicants (designated for the US only). The opposition division had held that D4 was entitled to priority from application P4 (D4a), which had been filed in the name of seven out of the ten inventors/applicants of D4. The board agreed with the findings of the opposition division both regarding the priority entitlement of D4 and the lack of novelty of claims 1 and 5 of the main request. On the question of priority entitlement of D4, the board recalled that G 1/22 and G 2/22 had set out that under the EPC normally a strong presumption exists that the priority applicants accept the subsequent applicant's reliance on the priority right for the purposes of Art. 88(1) EPC. This strong presumption also applies in a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant. The joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary (Order II of G 1/22 and G 2/22). Applying G 1/22 and G 2/22, the board held that the strong presumption of entitlement applied in the case in hand (which corresponded to the situation referred to in Order II of G 1/22 and G 2/22). Such presumption could only be rebutted in the presence of "serious" doubts based on facts or clear indications to the contrary (see G 1/22 and G 2/22, points 110 and 125 of the Reasons). The appellant had filed documents D12 to D14 to cast doubts that a valid priority transfer had taken place from the inventors to the corporation. According to the board, however, the evidence submitted by the appellant was not suitable to rebut the presumption of entitlement as also confirmed by the declarations of two inventors of D4. Consequently, D4 was entitled to priority from application P4 (D4a) and thus formed prior art for the patent at least according to Art. 54(3) EPC. On the question of novelty, the board noted that the appellant had not provided any substantiation that the opposition division's finding, i.e. that claims 1 and 5 of the main request lacked novelty if D4 was entitled to priority from application P4 (D4a), was erroneous. The board concluded that the main request contravened Art. 54 EPC.