Résumé de EPC2000 Art 087(1) pour la décision T2689/19 du 05.03.2024

In T 2689/19 the European patent application on which the patent was based was a divisional application of an earlier European patent resulting from an international PCT application. This PCT application claimed priority from six US provisional applications (P1, P2, P5, P11, P13 and P14). 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 a finding that the patent as granted lacked novelty and to its revocation. The patent proprietors appealed the opposition division's decision. The board pointed out that there had been a dispute in the US (the inventorship dispute) regarding whether Party A1, an employee of Party A2, should also be named as one of the inventors in the PCT application (PCT/US2013/074743), and about the ownership of the patent. The inventorship dispute had been resolved in January 2018: an independent arbitrator had decided, inter alia, that neither Party A1 should be named as an inventor, nor Party A2 as a proprietor in the PCT application. The board recalled that in G 1/22 and G 2/22 the Enlarged Board had found that "entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the applicant claims priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations...". This presumption was based on the concept of an implicit (implied, tacit or informal) agreement on the transfer of the priority right from the priority applicant to the subsequent applicant "under almost any circumstances". It, notably, allowed ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application. The Enlarged Board had noted, however, that "the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which the priority is claimed for the subsequent European application." Moreover, the Enlarged Board had found that a priority right and its transfer was a matter exclusively governed by the autonomous law of the EPC. Consequently, there was no room for the application of national laws on legal presumptions and their rebuttal. The board further recalled that the presumption that the subsequent applicant was entitled to the priority right was a strong presumption, under "normal circumstances". It 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 overlaps with the co- applicants for the subsequent application. This was the situation in the present case. Thus, the presumption of a validly claimed priority applied. G 1/22 and G 2/22 further provided that the presumption can be rebutted to take into account "rare exceptional circumstances" where the subsequent applicant cannot justifiably rely on the priority. The rebuttable presumption thus involved the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority had to prove that this entitlement was missing. Just raising speculative doubts - even if these were "serious" - was not sufficient. The board noted that the opponent's arguments were mainly based on documents concerning the resolution of the inventorship dispute, which said nothing about priority entitlement. From this, the opponents argued that these documents did not provide any basis for inferring the existence of an implicit transfer of the priority rights from Party A1/A2 to the appellants and, therefore, that the appellants had not provided evidence that they were entitled to the priority rights they claimed. According to the board, however, the presumption in G 1/22 and G 2/22 stated that the appellants do not have to provide such evidence, but the opponents have to rebut the presumption. There was no evidence that rebutted the presumption in the present case. If at all, there was evidence supporting the presumption of an implied transfer agreement. The entire purpose of the inventorship dispute was to have Party A1 named as inventor, and Party A2 as proprietor, in the PCT application. In the absence of evidence to the contrary, it was not credible that Party A1 or Party A2 would have acted in any way to invalidate the priority claim of the patent. The board found the priority claims to be valid and remitted the case to the opposition division for further prosecution.