Post-hearing Update - EPO Enlarged Board Of Appeal Tackles Entitlement To Priority

• Jurisdiction: European Union
• Law Firm: Kilburn & Strode
• Subject Matter: Intellectual Property, Patent
• Author: Mr Jamie Atkins and Abi Heath
• Published date: 15 June 2023

A version of this article was previously published on WIPR.

We recently reported on the highly anticipated oral proceedings before the EPO Enlarged Board of Appeal on legal entitlement to priority (G 1/22 and G 2/22). Read on to find out what happened at the hearing and what it could mean for stakeholders.

To recap the EBA has been asked two questions, which can be summarised as follows:

1. is the EPO competent to assess whether a party validly claims to be a successor in title?
2. is the priority claim for a European application valid where a priority application is filed by A and the priority claiming PCT application names A as an applicant for the US only but B as an applicant for all other states (including Europe)?

No decision was announced during the oral proceedings, which lasted less than three hours, but the positions of the parties after the hearing can be summarised as follows:

Party	Proposed answer to question 1	Proposed answer to question 2
Appellant (patentee)	Declined to comment directly in writing or at hearing	Yes
Respondent 1 (opponent 1)	No	Yes
Respondent 2 (opponent 2)	Yes	Yes
EPO President	Yes	Yes
EBA preliminary opinion	No indication given	Yes (preliminary and non-binding)

We'll have to wait for the written decision to find out the EBA's answers to these questions, but in the meantime we discuss below some interesting points from the hearing and possible implications of the EBA's decision.

What happened at the hearing?

Question 1

Opponent 1 was the only party arguing that the EPO should not assess whether a party validly claims to be a successor in title. Reasons for this included:

• There has been no transfer of sovereign rights to the EPO to decide on this aspect of property law.
• Legislators consider the assessment of the transfer of priority rights by the EPO as untoward interference in national law and that the EPO should be relieved of this burden.

If the EBA were to conclude the answer to Q1 is "yes", Opponent 1 suggested that the EPC should be the relevant law and the power of the EPO to determine if the applicant is the successor in title should be restricted to situations where there is substantiated doubt. The EPO should also not apply any particular formal requirements when assessing transfer of priority rights.
Opponent 2's position is that the EPO should assess entitlement to priority where this is relevant, for example to determine what is prior art. Arguments included:

• The case law has always supported the EPO's...