ENLARGED BOARD OF APPEAL REFERRALS IN G 2/21 (PLAUSIBILITY) AND G 1/22 & G 2/22 (PRIORITY ENTITLEMENT)

Recent referrals to the EPO’s Enlarged Board of Appeal in G 2/21 and in G 1/22 & G 2/22 promise to make 2022 an interesting year for EPO practitioners.

 

2022 looks set to be an interesting year for EPO practitioners in light of a number of recent referrals to the EPO’s Enlarged Board of Appeal. In particular, in G 2/21 (plausibility), the Enlarged Board has been asked to consider the question of plausibility as a requirement for applicants/patent proprietors who wish to rely on post-published evidence to support inventive step of their claimed invention. In G 1/22 and G 2/22 (priority entitlement), the Enlarged Board has been asked to assess the requirements for establishing formal entitlement to priority in situations where inventors of a US provisional application are named as joint applicants for a PCT application, but no formal transfer of the rights in the US provisional application occurred during the priority year.

 

G 2/21 (plausibility)

 

In the pending referral in G 2/21, the Enlarged Board has been asked whether a patent application has to make it plausible that the problem underlying the invention has been solved. The referring board is concerned whether such a requirement may result in unfair outcomes, especially in situations where the applicant was not aware of relevant prior art when preparing the application and therefore was unable to address the problem as later defined under the problem-and-solution approach that the EPO employs to assess inventive step. The referring board points to diverging lines of case law that either do not concern themselves with plausibility or merely require that the solution as claimed was “not implausible” at the application’s filing date in light of the state of the art. The question of plausibility can often be critical because post-published evidence that could be used to support an inventive step may not be considered in EPO proceedings if the original application did not make it at least plausible that the applicant had solved problem underlying the invention. Similar questions regarding plausibility can also arise under sufficiency of disclosure, in particular in connection with broad claims that are supported only by a limited number of examples in the application as originally filed.

 

G 1/22 & G 2/22 (priority entitlement)

 

More recently, in G 1/22 and G 2/22, the Enlarged Board of Appeal has been asked to provide additional guidance on the formal right to claim priority. This latest referral asks whether the European Patent Convention (EPC) confers jurisdiction on the EPO to determine whether a party can validly claim to be a successor in title during the formal assessment of priority entitlement. For some, this will bring back memories of the recent CRISPR battle at the EPO, where the Broad Institute in part defended its right to claim priority on the basis that the EPO had no jurisdiction to make an assessment as to whether the right to claim priority had been transferred to the applicants from a US provisional application to a later filed PCT application. However, in that case, the technical board of appeal concluded that the EPO had jurisdiction and decided against referring questions on this point to the Enlarged Board of Appeal.

 

The questions in the referrals G 1/22 and G 2/22 relate to a recently developed line of case law referred to as the “joint applicants approach”. Specifically the referring boards ask whether a joint applicants approach is acceptable to establish formal priority entitlement. This question arises when a US provisional application was filed in the name of the inventors and no assignment was filed during the priority year transferring the rights arising from the US provisional application to the corporate PCT applicant. In such circumstances, the EPO in the past denied the right to claim priority to the PCT applicant because it considered it not to be the successor in title to the applicants of the US provisional application, which it considers a formal requirement in light of Article 4 of the Paris Convention and the corresponding provisions in Article 87 EPC. As a work-around, recent case law developed the “joint applicants approach” which affirms the right to claim priority when the PCT application was filed with the inventors of the US provisional application as applicants for the US only. Under this approach, the inventors are considered to be joint applicants with the corporate PCT applicant due to the unitary nature of the PCT application. As such, the PCT application may validly claim priority from the earlier US provisional application because there is at least a partial overlap between the applicants of the earlier US provisional application and the later PCT application. Under current EPO practice, this partial overlap of the applicants is considered sufficient to establish a formal right to claim priority from the earlier filed application.