2.2.
Priority right of the applicant or his successor in title 

In T 1008/96 the European patent application resulting in the patent in suit and the two Italian utility model applications from which priority was claimed had been filed by different persons. The board held that the succession in title had to be proven to its satisfaction. It was a general principle of procedural law that any party claiming a right had to be able to show that it was entitled to that right (see J 19/87). This question had to be answered in accordance with national law. The board concluded that the respondent had failed to prove that it was the successor in title in respect of the two Italian utility model applications. Consequently, no priority rights existed for the patent in suit.

In T 62/05 the board pointed out that the EPC did not contain any regulations on the formal requirements that an assignment of priority rights for the filing of a European patent application should fulfil in order to be considered valid for Art. 87(1) EPC 1973. However, having regard to the crucial effect that a valid priority date has on patentability (cf. Art. 89 EPC 1973), and to the fact that, in the case at issue, the validity of the priority claim depended on the validity of the transfer of the ownership of the right of claiming priority from the Japanese first filing for the European patent application, such transfer of priority rights, in the board's view, had to be proven in a formal way (by analogy with T 1056/01 – also summarised in Chapter III.G.4.3.4). It hence appeared reasonable to the board to apply an equally high standard of proof as that required for the assignment of a European patent application by Art. 72 EPC 1973, which, however, the board concluded was not met here. Furthermore, the appellant could not convince the board that an assignment had taken place implicitly and tacitly before the end of the twelve-month period or that it would have been illogical for the applicant of the priority application to assign the application to the applicant for the patent in suit without assigning the corresponding priority rights.

In T 160/13 the board confirmed that the opposition division had rightly examined the transfer of the priority right on the basis of German law, which called for a bilateral declaration of transfer by both applicants (§§ 398 and 413 in conjunction with §§ 145 ff. of the German Civil Code (BGB)). Such declarations were not subject to any particular formal requirements under German law, and no other requirements of a formal nature could be inferred from the decisions cited by the appellant, T 1056/01 and T 62/05. In the board's view the correspondence on file provided ample proof of the transfer.

According to T 205/14, it is generally accepted that the right of priority is transferable independently of the corresponding first application and may furthermore be transferred to a third person for one or more countries only. It is thus an independent right until it is invoked for one or more later applications, to which it becomes an accessory, and it has to be distinguished from the right to the patent deriving either from substantive law or from the status of being the applicant of the first application.

Neither Art. 87 EPC 1973 and Art. 88 EPC nor R. 52 and 53 EPC set out any requirement for determining the law governing transfer of the priority right. The board disagreed with the reasoning of T 62/05 that the transfer had to be proven in a formal way, applying an equally high standard of proof as that required by Art. 72 EPC 1973. Art. 72 EPC 1973 set out formal requirements for a valid assignment of a European patent application and thereby limited the means of giving or obtaining evidence for determining such a transfer. Having regard to Art. 117 EPC and the principle of free evaluation of evidence, the rule should not be extended beyond its scope of application. Art. 72 EPC 1973 constituted harmonised law with respect to the formal requirements for a transfer of a validly filed European patent application, and no reason was apparent for applying it by analogy in the context of a transfer of the priority right preceding a subsequent filing. To do so in view of a subsequent European patent application would, in the case of a European first filing, ignore the fact that the priority right is a right independent of the right to the first application and, in the case of a non-European first filing, that Art. 72 EPC 1973 does not govern the relationship between the applicant of a European patent application and a different applicant of a distinct first application. Art. 72 EPC 1973 and R. 20 EPC 1973, and the related provisions (Art. 60(3) EPC 1973 and 61 EPC), rather defined the conditions under which the EPO may take into account questions of substantive law and procedural acts by a person other than the registered applicant (J 2/01, OJ 2005, 88, point 3 of the Reasons). The board came to the same conclusion as the German Federal Supreme Court in its decision of 16 April 2013 that Art. 87 EPC does not require a formal and separate assignment as provided by Art. 72 EPC.
Since the provisions of the EPC did not lend themselves to an autonomous determination of the requirements for transfer of the priority right, the validity of such transfer was a matter of national law (cf. T 1008/96; cf. also approach in T 160/13, J 19/87, T 493/06). In the circumstances of those cases, however, the choice of applicable national law did not seem to be an issue. In none was the law of the state for which protection was sought by the subsequent filing considered to be relevant, nor did they provide guidance on whether the law applicable to the legal relationship between the transferor and the transferee (e.g. corporate agreement, employment contract, or universal succession) should apply, or the law of the state of filing of the first application. This point of law was, however, relevant to the decision in hand. Accordingly, the board considered both the law applicable to the legal relationship between the transferor and the transferee of the priority right and the law of the state of filing of the first application and concluded that the former - in this case the law of the state of the employment relationship between the applicants (inventors) of the US provisional applications from which priority was claimed and the patent proprietor (here the law of Israel) - determined the transfer. On the basis of the evidence before it, the board was satisfied both that Israeli law did not require an assignment in writing signed by both parties and that the priority right had been transferred to the patent proprietor before the date of filing of the international application underlying the patent in suit. See also T 517/14.

In T 493/06 it was held that the respondents had provided sufficient proof of the assignment of priority rights. In the board's view even a copy of an assignment agreement could be sufficient provided that evidence was supplied that the content of the copy was identical to that of the original document. Such evidence might, according to board of appeal case law, take the form of an affidavit - even though affidavits were not expressly mentioned in Art. 117(1) EPC 1973 - and the principle of unfettered consideration of the evidence applied to them (see e.g. T 970/93, T 804/94, T 558/95 and T 43/00; also T 535/08).

The question of succession in title has also arisen where the validity of the priority claim has been put in doubt in view of a still earlier previous application (see in this chapter II.D.4).

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