G 0002/22 (Competence of the European Patent Office to assess whether a party is entitled to claim priority under Article 87(1) EPC (Entitlement to priority)) of 10.10.2023
- European Case Law Identifier
- ECLI:EP:BA:2023:G000222.20231010
- Date of decision
- 10 October 2023
- Case number
- G 0002/22
- Petition for review of
- T 2719/19 2022-01-28
- Application number
- 16160321.2
- IPC class
- C07K 16/18A61K 39/395
- Language of proceedings
- English
- Distribution
- Published in the EPO's Official Journal (A)
- Download
- Decision in English
- Other decisions for this case
- -
- Abstracts for this decision
- Abstract on EPC2000 Art 087(1)
- Application title
- Prolongation of survival of an allograft by inhibiting complement activity
- Applicant name
- Alexion Pharmaceuticals, Inc.
- Opponent name
- -
- Board
- -
- Headnote
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.
- Relevant legal provisions
- - Accord v RCT [2017] EWHC 2711 (Ch)- Biogen/Genentech v. Celltrion, 30 July 2019- Edwards v Cook [2009] EWHC 1304 (Pat)- Germany- TGI Valence of 16 February 1962, Ann. 1963, 313- The NetherlandsBundesgerichtshofCour de cassationDecisions of national courts citedEngland and Wales High Court, Patents CourtEuropean Patent Convention Art 112(1)(a)European Patent Convention Art 118European Patent Convention Art 139(2)European Patent Convention Art 54European Patent Convention Art 60European Patent Convention Art 61European Patent Convention Art 72European Patent Convention Art 76European Patent Convention Art 87European Patent Convention Art 88European Patent Convention Art 89European Patent Convention R 14European Patent Convention R 52European Patent Convention R 53FranceG.H.C. Bodenhausen, Guide to the Application of the Paris_Convention for the Protection of Intellectual Property, BIRPI, Geneva 1968Gerechtshof Den HaagGermanyJ. Straus, The Right to Priority in Art 4a(1) of the Paris Convention, JIPLP 2019, 687Law of the Contracting StatesLiteratureParis Convention Art 004Paris Convention Art 019Patent Act Art 9Patent Cooperation Treaty Art 11(3)T. Bremi, A New Approach to Priority Entitlement: Time for Another Resolving EPO Decision, GRUR Int. 2018, 128The NetherlandsUnited Kingdom
- Keywords
- admissibility of the referral-(yes)
rephrasing of the referred questions-(yes)
competence of the EPO to assess entitlement to priority-(yes) - Catchword
- -
ORDER
For these reasons, it is decided that the questions of law referred to the Enlarged Board of Appeal are answered 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.