EPO: Enlarged Board to consider entitlement to priority

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: Enlarged Board to consider entitlement to priority

Sponsored by

inspicos-400px recrop.jpg
Patent, EPO

Jakob Pade Frederiksen of Inspicos P/S discusses a technical board of appeal referral that deals with the issue of entitlement to priority

In consolidated cases T 1513/17 and T 2719/19, a technical board of appeal has referred two questions to the Enlarged Board of Appeal (EBA) on the issue of entitlement to priority. 

More specifically, the EBA is to consider if the EPC confers jurisdiction on the EPO to determine whether a party validly claims to be a successor in title to a previously filed application, from which priority is claimed. Phrased differently, if party B claims priority from an application filed in the name of legal entity A, is the EPO competent to assess if party B has validly obtained the right to claim priority from party A?

The matter is pending before the EBA under as G1/22 and G2/22. If the EBA holds that the EPO indeed has the authority to determined whether the party claiming the priority is the successor in title to the previously filed application, the EBA is further asked if a party B can validly rely on the priority right claimed in a PCT application in the case where a PCT application designates party A as applicant for the US only and party B as applicant for other designated States and regions, including the EPO, and the PCT application claims priority from an earlier application filed in the name of party A.

Such issues relating to priority arise frequently, for example in respect of applications claiming US priorities, in respect of which the inventor is named as the applicant, whereas the subsequent application claiming the priority is filed in the name of a corporate entity. For PCT applications, oftentimes, the inventor is named as the applicant for the US only, and the corporate entity is named as applicant for all other jurisdictions.

One possible outcome of the new referral is that the EBA endorses the ‘joint applicants’ approach which suggests that the priority claim of a PCT application commonly filed by joint applicants is valid if any one of the applicants is properly entitled to the claim to priority. In any event, applicants and their representatives are well advised ensuring an unbroken chain of assignments between applicants in cases where the applicant named in the priority application is not identically named in the application claiming the priority. 

 

Jakob Pade Frederiksen

Partner, Inspicos P/S

E: jpf@inspicos.com

 

 

 

 

 

 

more from across site and SHARED ros bottom lb

More from across our site

Niri Shan, the newly appointed head of IP for UK, Ireland and the Middle East, explains why the firm’s international setup has brought UPC success, and addresses German partner departures
Vlad Stanese joins our ‘Five minutes with’ series to discuss potentially precedent-setting trademark and copyright cases and his love for aviation
Heath Hoglund, president of Via LA, discusses how it sets royalty rates and its plans to build on growth in China
Stobbs stands accused of interfering with the administration of justice after Brandsmiths’ client was subjected to an interim injunction for unjustified threats
The firm, known for its prosecution expertise, discusses its plans following the appointment of a UK-based patent litigation head and two new partners
Ed White at Clarivate provides an exclusive insight into the innovation power clusters reshaping Europe and the Middle East’s IP landscape, and why quality is the new currency of invention
In the first in a new podcast series celebrating the tenth anniversary of IP Inclusive, we look back at the network’s origins and discuss its mission
Rebecca Schwarz at Haynes Boone shares how her team secured victory for biopharma client RedHill in a licensing dispute involving a developmental cancer drug
News of a breakaway firm launching in Germany and a spike in vaccine-related patent applications were also among the top talking points
A flurry of hiring activity among UK firms suggests they are confident of mounting a serious challenge at the UPC
Gift this article