Résumé de EPC2000 Art 087(1) pour la décision T2719/19 du 20.11.2023

T 2719/19 (of 20 November 2023) was the referring case in G 2/22 (consolidated with G 1/22). The application from which the (divisional) application in suit derived had been filed as an international application under the PCT (the "PCT application"). It named (i) the three inventors ("Party A") as applicants for the United States of America (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 three inventors. The examining division had found the priority claim to be invalid because only one of the three inventors had assigned the priority right to Party B prior to the filing of the PCT application. Thus, intermediate publications were novelty destroying and the examining division had refused the application. By interlocutory decision T 2719/19 (of 28 January 2022) the board had referred two questions to the Enlarged Board: (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 (rephrased by the Enlarged Board as: "Is the EPO competent to assess whether a party is entitled to claim priority under Article 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 board recalled that the Enlarged Board had decided that there was a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Art. 88(1) EPC and the corresponding Implementing Regulations was entitled to claim priority and that this presumption also applied in the factual situation of the case in suit, i.e. where the European patent application derived from a PCT application and where the priority applicant(s) were not identical with the subsequent applicant(s). Moreover, the Enlarged Board had ruled that in the situation of the case in hand, where the PCT application was jointly filed by Party A (as inventors and as applicants for the US only) and Party B, and claimed priority from an earlier patent application designating Party A as the applicant, the joint filing implied an agreement between Party A and Party B, allowing Party B to rely on the priority, unless there were substantial factual indications to the contrary (G 1/22 and G 2/22). According to the board, no substantial factual indications to the contrary were mentioned in the decision under appeal nor was the board aware of any. The board noted that the examining division had not referred to the further need to examine the application if the priority were found to be validly claimed. Since the appeal was allowable and no other objections had been raised in the decision under appeal or in the communications of the examining division leading up to the decision, the board remitted the case to the examining division with the order to grant a patent based on the set of claims filed on 8 November 2016, with the description and drawings to be adapted thereto, as necessary.