6 November 2020
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Technical Board of Appeal 3.3.08 issued the written decision in case T 844/18 confirming the revocation of a patent related to CRISPR gene editing. The revocation was based on a lack of novelty due to an invalid claim to priority.
The European patent EP 2 771 468 held by the Broad Institute and others relates to the CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) gene editing technology. CRISPR gene editing is a genetic engineering technique which allows inter alia to modify the genomes of living organisms in a targeted manner. The technology has been developed by several competing research institutions. Numerous patents and patent applications concerning this technology are pending before the EPO.
In the appealed decision the opposition division had revoked the patent. It had found that priority had not been validly claimed and that the claimed subject-matter was therefore not novel.
The applicants for the patent in suit were not the same as those for the priority application. Rather, one applicant was missing from the patent application and had not transferred its priority right to the remaining applicants.
The core legal issue is governed by Article 87(1) EPC and can be described as follows:
A and B are applicants for the priority application. A alone is the applicant for the subsequent application. Is a priority claim valid even without any assignment of priority right from B to A?
Under Article 87(1) EPC, any person who has duly filed an application for a patent or their successor in title shall enjoy a right of priority during a period of twelve months from the date of filing of the first application. Article 87(1) EPC corresponds to Article 4A of the Paris Convention for the Protection of Industrial Property.
The first question addressed by the Board was whether entitlement to priority should be assessed by the EPO or rather in entitlement actions before national courts. The Board concluded that Article 87(1) EPC both empowered and obliged the EPO to assess the validity of a claim to priority.
The second question was how to interpret the expression "any person" in Article 87(1) EPC. Under the established practice both at EPO and national level, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application, allowance being made for successors in title. The Board confirmed this so-called "all applicants" approach.
A third question concerned whether national law (in this case US law) governs the determination of "any person" who has "duly filed" under Article 87(1) EPC. On this point, the Board concluded that the Paris Convention was the law which determines who "any person" is.
For these reasons, the Board found that priority had not been validly claimed from several US provisional applications. Therefore, documents became relevant prior art over which the claimed subject-matter was not novel. The Board thus dismissed the patent proprietors' appeal against the opposition division's decision to revoke the patent.
The Board also stated that a referral to the Enlarged Board of Appeal was not necessary, because Article 87(1) EPC had been interpreted consistently by the EPO and the questions raised could be answered beyond doubt by the Board itself.
Spokespersons of the Boards of Appeal of the European Patent Office