EPO: Enlarged Board to consider entitlement to priority

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

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

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article