CRISPR – Invalid Priority Claim – T 844/18

CRISPR – Invalid priority claim – T 844/18

An invalid priority claim can have devasting consequences on the status of a patent as recently witnessed by The Broad Institute, Inc., at al., in T 844/18. The Patent in question, EP2771468, relates to the CRISPR gene editing technology. In January 2020, the EPO Board of Appeal dismissed the Patentees’ Appeal against the decision of the Opposition Division to revoke the Patent.

In Opposition, the Opposition Division revoked the Patent for lack of novelty in view of intermediate prior art that became relevant when the Opposition Division found that priority had not been validly claimed from a number of US provisional applications.

Art 87 (1) EPC states “Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. Similarly, Art 4A Paris Convention concerning right to priority states “any person”.

In making this decision, the Opposition Division applied established case law regarding the assessment of priority claims and took “any person” in Art 87 EPC to mean “all Applicants” stating that it was a plausible interpretation of the term from the ordinary meaning and one consistently applied for decades. In other words, in order for a priority claim to be valid, all of the Applicants listed for the priority application (or their successor in title) must be listed as Applicants for the subsequent priority claiming applications.

In this case, the Applicants in the subsequent application, namely the PCT from which the Patent derives, were not the same as the priority application as one Applicant was missing. Therefore, the priority claim was held to be invalid by the Opposition Division.

During Appeal, the Patentee set our three arguments in their Grounds;

  1. Entitlement to priority should not be assessed by the EPO.
  2. The Patentee questioned the EPO’s interpretation of “any person” in Art 87 EPC and Art 4 Paris Convention, arguing that it should be considered any one of the Applicants.
  3. The Patentee states that US law should governed the determination of “any person” who has “duly filed” in Art 87 EPC.

After lengthy discussions based on these arguments, the Board dismissed the Appeal.

The Board elected to decide on priority entitlement without a referral to the Enlarged Board.

This decision means that there is no change to the EPO’s long-standing practice to take the “all Applicant” approach to priority entitlement. The Decision should be taken as an important warning to attorneys, and to Applicants, to review who is entitled to claim priority when filing a priority claiming application and to ensure that the correct and complete set of Applicants (or their successor in title) are named. This is particularly important for US originating priority founding applications, which are often filed in the name of the inventors, as there may be an intention to file the subsequent priority claiming application in a different name, such as that of the employer.

Please contact one of our patent attorneys at PurdyLucy if you would like to discuss obtaining an assignment document and/or filing an assignment at the European Patent Office. An article on the requirements for registering a transfer of rights in respect to a pending European patent application at the EPO can be found here.

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