The CRISPR priority decision is out

ALL the applicants of a priority application must be named in a subsequent EP application

As discussed in a previous post, there were oral proceedings before EPO Board 3.3.08 on 13-17 January 2020 in appeal number T 844/18 in one of the so-called “CRISPR cases”. The written decision, which concluded that the patentee did not claim a valid priority, is now online. In the decision, the board confirmed the EPO’s use of the so-called “all-applicants approach” (in a simplified version):

  • A and B are applicants on the priority application.
  • A filed the subsequent application claiming priority from the priority application.
  • The priority is invalid because not all the applicants of the priority application were named on the subsequent application.

The board discusses in detail the meaning of the term “any person” in Article 87(1) of the European Patent Convention (EPC)/Article 4 of the Paris Convention (PC). The conclusion is that the term is not clear, but that it is established practice to require all applicants on the priority application to also be named on the subsequent application. Hence, abandoning the “all-applicants approach” would disrupt current practice, which in turn means (according to the board) that the patentee was faced with a heavy burden of proving the current practice wrong. The board found this burden not to have been lifted.

The board also considered the purpose and spirit of the Paris Convention as discussed in T 15/01:

  1. The right of priority is generally regarded as one of the cornerstones of the Paris Convention and was already incorporated in the original text of 1883 (cf Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, 1969, Article 4, Section A(1), point (a); Ladas, Patents, Trademarks, and Related Rights, Vol. I, 1975, p. 456). Its basic purpose is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law.
  1. In the course of the revisions of the Paris Convention, several amendments were made to its priority provisions in order to enhance their flexibility and thereby ameliorate the legal position of patent applicants. It was considered that overly strict solutions would hardly be in accord with the spirit of the Union treaty which is aimed at fostering and encouraging inventive genius (cf Actes de la Conférence réunie à Washington du 15 mai au 2 juin 1911, Berne 1911, p. 45). In particular, the Paris Convention in its present version (Stockholm Act) explicitly recognises the possibility of claiming multiple and partial priorities (cf Article 4F) and guarantees the right to divide patent applications while preserving the benefit of the right of priority also for the divisional application (cf Article 4G Paris Convention). The same principles are reflected in the corresponding provisions of the EPC, ie Articles 76(1), second sentence, and 88(2) and (3).
  2. In the light of the above, the board disagrees with the view expressed in decision T 998/99 (point 3.1), according to which the international priority provisions contained in the Paris Convention have to be regarded as a body of exceptional rules which should be interpreted strictly. Rather, they have to be construed in a manner which ensures that the general purpose they serve, namely to assist the applicant in obtaining international protection for his invention, is fulfilled as far as possible.

The board agreed with these remarks but found that the Paris Convention does not aim to help others than the correctly determined “any person” and that it therefore did not help the patentee’s case.

The board also addressed whether it was competent to assess whether it was the correct (legal) person who had filed the subsequent application claiming priority. The board distinguished between the formal naming of applicants on the priority application and whether these applicants were in fact entitled to be named as priority applicants. The board found the EPO to be competent to assess the former and that the latter was not relevant for their decision.

Article 87 EPC also refers to a “successor in title” of the priority applicant. The board stated that the EPO requires evidence of succession in title, but that since no succession in title was alleged by the patentee, they did not have to review it. What remains unclear is what would constitute sufficient evidence (and what succession is in fact meant since the EPO is not required to assess entitlement to the priority application per se).

The board did not address the so-called “co-applicants approach” in their decision since it was not relevant for reaching the decision. Hence, the decision still leaves open a number of issues concerning the right to claim priority.

Further appeal cases that may clarify the EPO’s position on the right to claim priority are T 2749/18, T 1837/19, and T 477/19 (Aera is representing the patentee in the latter appeal). A decision in any of these cases is unlikely to be available for at least another couple of years.