Update from the EPO: Getting your European priorities (even) straighter

By Oliver Harris,

Latest development at the EPO is a further example of the challenges that applicants, particularly from the US, face when ensuring valid priority claims for European Patent (EP) applications, as Dr Oliver Harris explains. 

We previously reported on a European Patent Office (EPO) Board of Appeal decision (T0844/18) that reaffirmed the EPO’s “All applicants” approach to priority. This requires that all applicants of a priority filing, or their successors in title, must be named as applicants on a later case, for that later case to validly claim priority to the priority filing.  

Now, there is a referral to the Enlarged Board of Appeal on another aspect of priority entitlement, specifically regarding European regional phase applications derived from Patent Cooperation Treaty (PCT) applications. 

By way of background, several prior decisions have held that if a PCT application is filed naming multiple co-applicants, the right to claim priority should be deemed valid if any of those co-applicants hold the right to claim priority, even if the co-applicants are named as applicants for different PCT states. A typical example of such a scenario is where an inventor is (or inventors are) named as the applicant(s) for the US and a legal entity is named as the applicant for all other states. This has sometimes been referred to as the “PCT joint applicants approach”. 

This approach will now be considered by the Enlarged Board. The first question asks if the EPO has jurisdiction to examine legal entitlement to priority. The second question (to be addressed if the answer to the first is “yes”) essentially asks if the PCT joint applicants approach is valid. Many applicants and their representatives will no doubt be eagerly awaiting the outcome. 

Guidance for applicants

Establishing valid priority claims is crucial to success for patent applications, and some of the more common pitfalls in Europe, particularly for US applicants, are as follows (where the ‘later case’ is a later-filed application claiming priority to the priority filing):

  • failure to name all applicants (or successors in title) of a priority filing on the later case;
                   • in relation to the commentary above, if the later case is a PCT application, it is prudent to ensure that all applicants (or successors in title) are named in respect of (at least) the EP designation;
  • failure to establish a chain of title from an applicant of a priority filing to their successor in title, before the later case is filed in the name of that successor; and
  • failure to use a priority filing that is the first filing for the invention in hand (as can sometimes arise for example when the priority filing being used is a US continuation-in-part or CIP).

Given the potential penalties, it is advisable to consult with a qualified European Patent Attorney ahead of filing a PCT application. At Novagraaf, we are on hand to provide advice on this important matter, generally or on a case-specific matter. Please get in touch with one of our European patent attorneys for further guidance or support, or contact us below. 

Dr Oliver Harris is a European and UK Chartered Patent Attorney and Managing Director, Patents, at Novagraaf UK.

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