- The Enlarged Board decided that assignments of priority rights that are claimed for the benefit of European patent applications, are regulated exclusively by the EPC as autonomous law, and that accordingly implied agreements suffice for such assignments. Moreover, a rebuttable presumption exists that the applicant of the subsequent application is entitled to the priority right if the priority declaration and priority document are timely filed under Article 88 EPC and the Implementing Regulation. The key parts of the decision (paras 129-131 and paras. 99 and 100) are shown below.
- Below the "read more", I provide a paragraph-by-paragraph analysis of G 1/22.
- The German BGH decided to follow G 1/22 in a recent decision (X ZR 83/21 para. 119; link)
129. The subsequent applicant wishing to file a European patent application should not only hold the title to that European application (i.e. the right to the European patent [i.e. the right of Art. 60(1) EPC) but also the priority right [Art. 87(1) EPC] if such right [i.e. priority] is claimed for the European application.
In the context of the EPC and the proceedings before the EPO, a strict distinction should be made between the two rights. The title to the subsequent application, on the one hand, is [...] assessed by national courts in view of Article 60(3) EPC (above points 79 ff). The right to claim the priority date for the subsequent European application, on the other hand, has been shown to be a right created under the autonomous law of the EPC and the Paris Convention, the transfer of which should also be assessed under the autonomous law of the EPC (above points 83 ff).
130. The exclusive application of the autonomous law of the EPC to the transfer of priority rights removes the need for conflict of laws rules and the application of national laws, thereby eliminating two main reasons invoked against the EPO's competence to assess whether a party is entitled to claim priority under Article 87(1) EPC. After evaluating various arguments supporting and denying this competence of the EPO (above points 83 ff, 93 ff), the Enlarged Board concludes that the EPO is competent to assess priority entitlement.
99. [...] The EPO should [...] accept informal or tacit transfers of priority rights under almost any circumstances. [...]
100. For example, the autonomous law of the EPC should not require that the assignment of priority rights has to be in writing and/or has to be signed by or on behalf of the parties to the transaction (see above point 69 for the diverging case law on this issue) since this would establish a high threshold in view of the national laws. [...]
131. In view of the interests of the parties involved, the lack of formal requirements for the transfer of priority rights [see point 99 above] and the necessary cooperation between the priority applicant and the subsequent applicant in the context of the procedural requirements under Article 88(1) EPC [i.e. the filing of the priority document], the Enlarged Board concludes that the entitlement to priority should be presumed to exist. This presumption should be rebuttable to take into account rare exceptional cases in which the claiming of the priority by the subsequent applicant appears to be unjustified (above points 101 ff).
source http://justpatentlaw.blogspot.com/2024/01/g-122-entitlement-to-priority-comments.html
