European patent and priority claiming from a patent application in a state not member of the Paris Convention (G 2/02)
26.01.2005
On April 26, 2004, the EPO Enlarged Board of Appeal gave its decision regarding claiming the priority from a first filing in a state which is not a member of the Paris Convention but a member of the WTO/TRIPS Agreement.
On April 26, 2004, the EPO Enlarged Board of Appeal gave its **1** regarding claiming the priority from a first filing in a state which is not a member of the Paris Convention but a member of the WTO/TRIPS Agreement.The factsThe applicant of a PCT application had claimed the priority of a patent application filed in India. On entry into the regional phase before the EPO, the Receiving Section refused the request for claiming priority. The Euro-PCT applications were filed on March 12, 1996 claiming priority of Indian patent application of March 13 and 23, 1995.India became party to the WTO, including the TRIPS Agreement, with effect from 1 January 1995. On 3 January 1995, the Government of India caused a Notification to be published in the Gazette of India declaring with immediate effect each of the members of the WTO to be a "convention country" for all the provisions of the Patents Act, 1970, India was thereafter bound inter alia to recognise priorities from all TRIPS Agreement members.However, the Notification in the Gazette of India made no mention of the European Patent Office.Neither the European Patent Organisation nor its organ, the EPO, is party to the WTO/TRIPS Agreement and there is no provision in either instrument to allow these bodies to adhere to them.Then, India became party to the Paris Convention with effect from 7 December 1998; since then priorities claimed from first filings in India are recognised by the EPO pursuant to Article 87(1) EPC. Thereafter, the Government of India announced that henceforth priority could be claimed in India from first filings in all member states of the Paris Convention.However, in both cases no mention was made of the EPO. It was not until a Notification dated 20 May 2003 published in the Gazette of India that the EPO was included in the list of countries, including groups or unions of countries or intergovernmental organisations, recognised as convention countries under the Paris Convention. Reasons for the decisionProvisions of the EPC concerning recognition of priorityThe present case concerns Article 87 EPC, which deals with the recognition of priority rights for first filings in member states of the Paris Convention and provides inter alia as follows:« (1) A person who has duly filed in or for any State party to the Paris Convention for the Protection of Industrial Property, an application for a patent [...], or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application....(5) If the first filing has been made in a State which is not a party to the Paris Convention for the Protection of Industrial Property, paragraphs 1 to 4 shall apply only in so far as that State, according to a notification published by the Administrative Council, and by virtue of bilateral or multilateral agreements, grants on the basis of a first filing made at the European Patent Office as well as on the basis of a first filing made in or for any Contracting State and subject to conditions equivalent to those laid down in the Paris Convention, a right of priority having equivalent effect. »No declaration having been received from India to the effect that it would recognise priorities from European first filings, the condition of reciprocity laid down in Article 87(5) EPC was not satisfied.In December 1998, as a consequence of India’s accession to the Paris Convention on 7 December 1998, the EPO underlined the problem of priority claims based on applications filed before the date of India’s accession to the Paris Convention and stated that it would accept such priority claims if India treated European first filings in the same way.In July 2003, the Indian Government informed the EPO that India had notified the EPO as a "convention country" for the purpose of claiming priority in India from applications for patents filed at the EPO on or after 20 May 2003.Situation before 20 May 2003According to general principles of international law, a treaty does not create either obligations or rights for a third State or international organisation without its consent. Such an obligation can only arise if there is an intention to that effect and the third State or third organisation expressly accepts that obligation inwriting (Articles 34 VCLT 1969 and VC 1986). Thus, the TRIPS Agreement can only create obligations for the EPO with its consent in writing, in accordance with the provisions of the EPC.The European Patent Organisation as a public international organisation has an internal legal system of its own. The EPC provides an autonomous legal system for the granting of European patents. The EPO is not itself party to the WTO and the TRIPS Agreement. Thus, the obligations deriving from the TRIPS Agreement do not bind the EPO directly but only such contracting states of the EPC as are members of the WTO and the TRIPS Agreement. In this connection, it is irrelevant whether some or all of the contracting states of the EPO are party to the TRIPS Agreement.Reference should also be made to Article 66 EPC, under which a European patent application which has been accorded a date of filing shall, in the designated EPC contracting states, be equivalent to a regular national filing, where appropriate with the respective priority. From this provision, read together with Article 4, Section A(2), Paris Convention, it may be concluded that member states of the Paris Convention and WTO members are obliged to recognise European patent applications as equivalent to regular national filings in EPC member states. It does not, however, provide a mechanism to oblige the EPO to recognise priorities from states which are not contracting states of the EPC or the Paris Convention unless the formal undertakings required under Article 87(5) EPC have been made and a corresponding notification has been published by the Administrative Council of the Organisation.In summary, therefore, TRIPS provisions, like decisions of the European and International Courts of Justice and national decisions, are elements to be taken into consideration by the boards of appeal but are not binding on them. Whereas it is legitimate for the boards of appeal to use the TRIPS Agreement as a means to interpret provisions of the EPC which admit of different interpretations, specific provisions of TRIPS cannot justify ignoring express and unambiguous provisions of the EPC.For these reasons, the Enlarged Board of Appeal concluded that there is no legal basis for the EPO to apply the TRIPS Agreement.It has to be noted that Article 87, paragraphs (1) and (5), EPC, were amended in 2000 to provide for the recognition by the EPO of first filings in a WTO member state as giving rise to a right of priority. This revised text has not yet entered into force. It will do so only two years after ratification by 15 contracting states or on the first day of the third month following ratification by the last of all contracting states, whichever is the earlier. OrderFor these reasons it has been decided that: The TRIPS Agreement does not entitle the applicant for a European patent application to claim priority from a first filing in a state which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPS Agreement.
