Résumé de EPC2000 Art 087(1) pour la décision G0002/22 du 10.10.2023

In consolidated cases G 1/22 and G 2/22, the Enlarged Board ("EBA") considered the points of law referred to it by Technical Board of Appeal 3.3.04 (the "referring board") in T 1513/17 and T 2719/19 (consolidated). In the cases underlying the referral the priority claim had been found to be invalid. This had led to the revocation of the patent (T 1513/17) and the refusal of the application (T 2719/19) for lack of novelty.The application on which the patent was granted in T 1513/17 (and from which the application derived in T 2719/19) was filed as an international application under the PCT (the "PCT application"). It named (i) the 3 inventors as applicants for the US only and (ii) other (legal) persons including the appellant ("Party B") as applicants for all other designated States. The PCT application claimed priority from a US provisional application filed in the name of the 3 inventors. The opposition division and the examining division found the priority claim to be invalid because only 1 of the 3 inventors had assigned the priority right to Party B prior to the filing of the PCT application. Thus, intermediate publications were novelty-destroying. The referring board referred two questions to the EBA: (I) whether the EPC conferred jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Art. 87(1) EPC; and (II) if so, whether in the situation described above, Party B could validly rely on the priority right claimed in the PCT application for the purpose of claiming priority rights under Art. 87(1) EPC. The EBA rephrased question I as: "Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) EPC?". Both questions were admissible under Art. 112(1)(a) EPC. The EBA noted that a strict distinction should be made between the title to the subsequent application and the right to claim the priority date for that application. Art. 60(3) EPC did not apply to the right of priority referred to in Art. 87(1) EPC, neither directly nor by analogy. The EBA concluded that the EPO was competent to assess priority entitlement and that this assessment should be made under the autonomous law of the EPC. According to the EBA, there is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Art. 88(1) EPC is entitled. This presumption was justified in view of (i) the interests of the parties involved, (ii) the lack of formal requirements for the transfer of priority rights and (iii) the necessary cooperation between the priority applicant and the subsequent applicant in the context of procedural requirements under Art. 88(1) EPC. The presumption also applies where the European patent application derives from a PCT application and/or where the priority applicants are not identical with the subsequent applicants. It therefore applied to the situation described in question II. The EBA also endorsed the concept of an implied agreement and concluded that, in the absence of substantial factual indications to the contrary, the joint filing of a PCT application sufficiently proved that the parties had entered into an implied agreement allowing Party B to rely on the priority. The EBA answered the questions of law referred to it as follows: I. The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC. There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority. II. The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s). 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.