Claiming Priority in the Epo

• Jurisdiction: European Union
• Citation: Vol. 46 No. 2
• Publication year: 2021
• topic: Contracts,Patent law,Intellectual Property,Corporate / Commercial

Claiming Priority in the EPO

D. Benjamin Borson

Borson Law Group P.C.

BACKGROUND

The Paris Convention provides that for member states, one may file a provisional or other "first" patent application, and within a 1-year period, file a second, or non-provisional patent application (International PCT or National) claiming priority to the provisional or first application. Subsequently, one may file a Regional Phase application in Europe (i.e., the EPO).

Commonly, an Applicant files a provisional application and thereafter files an International (PCT) application, and thereafter files a European regional phase application, claiming priority to the PCT and provisional applications. At the outset, the Applicant owns the right to claim priority.

Although one may prepare and file a provisional application without all the implementing steps or components (i.e., a "conceptual" or "Coversheet" provisional, serious problems can be encountered in the examination phase of prosecution.

FIRST OR PRIORITY INVENTION

There are circumstances in which an applicant may wish to add subject matter prior to filing the non-provisional application. Questions arise about how one could claim priority to the provisional application. If new matter is added, is the Applicant entitled to claim priority to the prior filed application? The answer depends on whether the priority application is drawn to the "same invention" as the non-provisional application.

Article 138 EPC: Revocation

A European patent may be revoked with effect for a Contracting State only on the grounds that the proprietor of the European patent is not entitled under Article 60, paragraph 1.

In an earlier article published in New Matter 45(1):15-35 (Spring 2020), the issue of new matter and improper entitlement was subject to revocation by the EPO of EP 2,771,468 (EP '468 patent). The EP '468 patent is drawn to use of CRISPR technology for gene editing in eukaryotic cells. The EP '468 patent named The Broad Institute. MIT, and Harvard College as Applicants. The patent was opposed by Novozymes A/S, CRISPR Therapeutics GG and others.

The EP '468 patent claimed priority to 11 US provisional patent applications. The 11 provisional applications named 4 common inventors, and for 4 other provisional applications, an additional inventor was named from the Rockefeller University. Rockefeller University was not a named Applicant. The application claimed priority to all 11 US provisional applications.

After entry in the EP Regional Phase, the Opposition Division (OD) of the EPO issued a formal opinion, in which the claims were found to lack novelty or inventive step because the OD found that the '468 patent was not entitled to its asserted priority claim, and that intervening prior art destroyed novelty and inventive step.

Based on these rules, to validly claim priority, all of the entities having ownership of the invention (Broad Institute, MIT, Harvard College, and Rockefeller University) must be named Applicants when the PCT application was filed. Because Rockefeller University was not an Applicant, the claims of priority to 4 of the US provisional applications listing the Rockefeller inventor were not valid.

The Opposition Division held that the named...