T 2516/19 - priority claim

G1/22, priority claim, rebuttable presumption


This is an appeal by the patent proprietors ("appellant I") and opponents 2 and 3 ("appellants II and III", respectively) against an interlocutory decision of the opposition division according to which the European No. 2 896 697 could be maintained in amended form.

The patent in suit relating to a CRISPR-Cas 9 system is based on European patent application no. 15 154 539.9 which is a divisional application of an earlier European patent resulting from an international PCT application that claimed priority from twelve earlier US provisional applications. These earlier US provisional applications are referred to as P1 to P12.

The opposition division found priority was not validly claimed from P1, P2, P5 and P11 and hence that the claims as granted lacked novelty.

In G 1/22, the Enlarged Board found that "entitlement to priority should in principle be presumed to exist to the benefit of the subsequent applicant of the European patent application if the applicant claims priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations".

This presumption is based on the concept of an implicit (implied, tacit or informal) agreement on the transfer of the priority right from the priority applicant to the subsequent applicant "under almost any circumstances".

It, notably, allows ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application. The Enlarged Board continues: "However, the allowability of a retroactive transfer of priority rights may have limited practical relevance if priority entitlement is presumed to exist on the date on which priority is claimed for the subsequent European application".

The Enlarged Board further found that the presumption that the subsequent applicant is entitled to the priority right is a strong presumption, under "normal circumstances".

The Enlarged Board further states that the presumption will apply to any case in which the subsequent applicant is not identical with the priority applicant, and thus also to a plurality of co-applicants for the priority application.

This is the situation in the present case. Thus the presumption of a validly claimed priority applies.

G 1/22 further provides that the presumption can be rebutted, to take into account "rare exceptional cases" where the subsequent applicant cannot justifiably rely on the priority.

The rebuttable presumption thus involves the reversal of the burden of proof, i.e. the party challenging the subsequent applicant's entitlement to priority has to prove that this entitlement is missing. Just raising speculative doubts - even if these are "serious" - is not sufficient: to put into question the subsequent applicant's entitlement to priority, (full) evidence would be needed.

In the present case, the opponents' arguments were mainly based upon the contents of documents D236 and D436 concerning the resolution of the inventorship dispute, that say nothing about priority entitlement. From this, the opponents argue that these documents do not provide any basis for inferring the existence of an implicit transfer of the priority rights.

The opponents are thus arguing that appellant I has not provided evidence that they are entitled to the priority rights they claim. However, this is precisely what the presumption in G 1/22 states: that appellant I does not have to provide such evidence, but the opponents have to rebut the presumption.

There is no evidence that rebuts this presumption in the present case. If at all, there is evidence to the contrary, which supports the presumption of an implied transfer agreement.

The entire purpose of the inventorship dispute was to have one of the inventor named as inventor, and his University as proprietor, of several PCT applications. In the absence of evidence to the contrary, it is not credible that said inventor or his University would have acted in a way to invalidate the priority claim of a patent they were seeking to be named as inventor of, and owner of, respectively.

Accordingly, the very purpose of the final arbitration settlement was to safeguard the inventions, and ensuring their patent protection, not the least because of the parties' common interest in the validity of the necessary priority rights.

Such settlement of the dispute was, by definition, "retroactive", as putting an end to a dispute that arose in the past, and thus relates to the (earliest) date on which priority was claimed.

The settlement of the inventorship dispute is thus no "later development", but confirmed, to the contrary, an ex-post transfer agreement. Accordingly, history is not "rewritten", as asserted by the opponents.

However, for clarification, it is recalled that even in the absence of any evidence regarding the settlement of the inventorship dispute, the result would have been the same, based on the presumption of a valid priority claim, which has neither been rebutted by this nor any other evidence on file.

As also reiterated in G 1/22: There is always a party who is entitled to claim priority, even if this party has to be determined in national proceedings (with this being the same if the dispute is settled outside the courts, by way of amicable settlement or arbitration, as is the case here). Not the least, the present case clearly shows that only the rebuttable presumption of a priority right guarantees that there is a party being entitled to claim priority, and that this right is not "lost" somewhere in an inventorship dispute.

Hence the entitlement to priority was validly claimed.

The opposition division found that the patent could be maintained only in amended form. The patent as granted was found to not be novel. This conclusion was a direct consequence of the opposition division's finding that priority had not been validly claimed from P1, P2, P5 and P11.

The board finds such priority claims to be valid, hence it is necessary to set the decision under appeal aside and remit the case to the opposition division for further prosecution.

The decision under appeal is set aside.

The case is remitted to the Opposition Division for further prosecution.