PATENTS – The Enlarged Board of Appeal (“EBA”) on the European Patent Office (“EPO”) rules of priority

Newsletter n. 90 – November 2023

PATENTS

The Enlarged Board of Appeal (“EBA”) on the European Patent Office (“EPO”) rules of priority

On 10 October 2023, in consolidated cases G 1/22 and G 2/22, the EBA issued its decision (the “Decisions”) on two questions of law related to the right of priority, as referred by the Technical Board of Appeal. The first question concerns the EPO’s competence to assess the entitlement to claim priority for the subsequent patent application. The second is related to a party’s right to claim priority rights under Article 87(1) of the European Patent Convention (“EPC”) where the European patent application derives from a PCT application and the priority applicants are not the same as those indicated in the subsequent patent application. On the first question, the EBA ruled that the EPO is competent to assess a party’s entitlement to claim priority and that there is a rebuttable presumption that the applicant claiming priority in accordance with Article 88(1) of the EPC is effectively entitled to do so. On the second question, the EBA ruled that the aforementioned rebuttable presumption also applies if the priority applicants are not identical to the subsequent applicant in cases in which the EU patent application derives from a PCT application, in that it presumes the existence of an agreement between two designating parties conferring the right to benefit from priority in the EPC territory on the sole subsequent applicant.