Nexus: Article 87 EPC

Clarity is needed from the Boards of Appeal on the EPO's "co-applicant approach" to priority

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The high-profile CRISPR patent dispute relates to the EPO interpretation of "any applicant" in Article 87(1) EPC (IPKat post here and here). According to the well-established case law of the Boards of Appeal, Article 87(1) EPC requires that if applicant X and Y are named on the priority application, applicants X and Y (or their successors in title) must also be named on the application claiming priority. However, this is not the only controversial aspect of the EPO’s approach to priority. A lesser known aspect of EPO priority is that the "any applicant" phrasing of Article 87(1) EPC permits additional applicants to be added to the subsequent application. In other words, if applicants X and Y are named on the priority application, applicants X, Y and Z may be named on the subsequent application claiming priority. This is called the “co-applicants approach” to priority (see Guidelines A-III, 6.1).

What is the co-applicants approach?

The co-applicants approach derives support from T 1933/12. This Boards of Appeal (3.2.08) decision reasoned that Article 87(1) EPC does not prevent an applicant for a first application (P1) sharing their right to priority with a co-applicant for a subsequent application (A1) claiming priority from P1 (r. 2.4). Article 87(1) EPC merely requires that all of the applicants of P1 are also applicants of A1 (or their successor in title). Thus, an applicant may be named on the subsequent application that was not an applicant (or a successor in title of the applicants) of the priority application.

And then there were three

Notably, Derk Visser is not a supporter of the Board's reasoning in T 1933/12, describing their justification of the co-applicant approach as "poor" (The Annotated European Patent Convention, Article 87(1)). Mr Visser further argues that the co-applicant approach of T 1933/12 is inconsistent with the EPO's reasoning that all applicants (X and Y) of the priority application (or their successor(s) in title) are named on the subsequent application claiming priority (as in the CRISPR case). The latter is based on the understanding that X and Y are a legal unity that cannot be divided, whilst the co-applicant approach permits a change of the legal unity of X+Y into X+Y+Z.

The co-applicant approach and PCT applications

A recent opposition decision considered the applicability of the co-applicant approach to a more complex situation. In this case, the PCT application claiming priority specified different applicants for different designated states. One of the applicants for the PCT application was not named on the application from which priority was claimed. So was the "extra" applicant entitled to priority?

The case related to GSK’s European patent EP 1965823, which was opposed by Sanofi, Novo Nordisk, Generics Ltd and Eli Lilly. The patent relates to GLP-1 for use in a method of treating diabetes. All four opponents argued that the patent was not entitled to priority from the US provisionals P1 and P2. The opponents argued that GSK had failed to provide evidence that, on the filing date of the PCT, the right to claim priority had been transferred from the inventor-applicants of P1 and P2 (Mr O’Neill and Mr Bush) to Smithkline Beecham Corporation (SBC) (for more on assignment of priority rights, see IPKat: Assigned or not assigned).

During oral proceedings, GSK relied on the “co-applicants approach”. The PCT application had been filed in the names of SBC and the inventor-applicants of P1 and P2. SBC was listed as the applicant for all designated states apart from the US. Messrs O’Neil and Bush were listed as the applicants of the PCT for the US designation only.

The Opposition Division noted that in the case of different applicants for different designations of a PCT application, the applicants are still considered co-applicants (Article 118 EPC). Legal basis for this position was provided in the form of J2/04, which relates to the legal status of co-applicants in general. According to J2/04, two persons who file an application in common cannot acquire a procedural status different from a single applicant, because otherwise each of them could perform different and contradictory procedural acts (e.g. filing a divisional).

The Opposition Division further noted that there was no PCT provision preventing the application of the “co-applicants approach" to the international phase of a PCT application. On the contrary the PCT refers to the existence of “one single and common international application” (Article 3 PCT). The Opposition Division concluded that:

"the PCT provisions of Forms do not appear to allow distinguishing the priority claims to different designated States…This shows that the PCT application is not simply a mechanism for the central filing of multiple separate national/regional patent applications, but rather gives rise during the international phase to a genuine international application with effects for all applicants and in relation to which joint applicants have to act in common."

Clarity is needed from the Boards of Appeal

The GSK patent was revoked on grounds other than invalid priority. GSK has appealed the decision. In reply to the appeal, Eli Lilly has argued that it was incorrect for the EPO to apply the co-applicant to the patent. Lilly particularly cites T 205/14 and T 517/14 in which the Board (3.3.01) required, in a situation analogous to that in the case in EP 1965823 (GSK), evidence of a transfer of the right to priority to the additional applicant (Z) of the PCT application from the applicants (X+Y) of the priority applications. None-the-less, the position of the Opposition Division in EP 1965823 is broadly in line with a number of opposition division decisions, e.g. EP2940044, and the Guidelines for Examination.

There is another pending appeal challenging the co-applicant approach. The case relates to one of AbbVie’s Humria patents (T 1837/19). In this case, Abbott Laboratories was listed as the applicant for the PCT application for all designated states apart from the US. The applicant-inventors of the US provisional applications from which priority was claimed were listed as the applicants for the US designation. The opponent has argued in their Statement of Grounds of appeal that the EP application is just one of the bundle of applications making up the PCT application, and that the EP application is different from and therefore does not include the applicants of the US provisional.

Unlike the issue at stake in the CRISPR appeal, the case law supporting the co-applicant approach is flaky at best. However, it seems likely that we will soon receive clarity on the legality of the co-applicants approach from the Boards of Appeal. Will the Boards of Appeal follow the more lenient approach to priority represented by the co-applicant approach followed by the opposition division, or will we see a tightening up of the requirements?

BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)

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An interesting update in the progress of the CRISPR/Broad Institute appeal (T0844/18) has reached this Kat’s fluffy ears. As previously reported on IPKat, oral proceedings are scheduled for 13-17 January 2020. The Board of Appeal (BA), 3.3.08, has now issued a communication summarising the issues that will be discussed in the hearing. It seems that the 4.5 day hearing will be almost entirely devoted to consideration of whether the EPO’s long-standing approach to priority, particularly the “same applicant test”, should be altered. Many thanks to an anonymous Katfriend for sending the communication to IPKat.

Background

T0844/18 is an appeal from the opposition division (OD) decision to revoke the Broad’s Institute’s CRISPR/Cas-9 patent, on the grounds of lack of novelty in view of an invalid priority claim (IPKat post here). The OD decision was in line with the large body of EPO case law on priority. The case law provides that the right to claim priority from an earlier application according to Article 87 EPC is afforded to the applicant of the earlier application and to no other party (i.e the applicant(s) must be the same). The Broad's CRISPR European patent (EP2771468) was based on a PCT filing (WO 2014204729) claiming priority from a number of US provisional applications. One of the US provisionals named an inventor-applicant who was not named on the PCT application. The EP patent was thus revoked in view of an invalid priority claim.

The importance of the case (and the significant commercial importance of CRISPR), is reflected by the Broad Institute’s ninety-four page grounds of appeal, with supporting declarations from such eminent persons as Lord Neuberger and Lord Hoffman (IPKat post here). Equally long responses have been submitted by the numerous opponents.

Preliminary thoughts from the Board of Appeal

From the Communication, it is clear that majority of the 4.5 day hearing will be taken up with discussion of the substantive issue of the validity of the Broad’s priority claim. The issue in question is succinctly summarised by the BA:

"A and B are applicants for the priority application. A alone is the applicant of the subsequent application. Is the priority claim valid even without any assignment of priority right from B to A

The appellants say that the answer is ‘yes’ and the respondents that it is ‘no’".

The BA then provides a preliminary view of some of the points of contention among the parties.

The BA first notes that current case law favours the opponents of the patent. Regarding the linguistic arguments relating the meaning of “any person” in Article 87 EPC, the BA “is of the view that the term ‘any person’ is ambiguous, rending attempts to elucidate the meaning of these provisions upon a purely linguistic basis difficult and most unlikely to succeed”.

A packed room is expected at oral proceedings

On the relevance of national law (as argued for by the Broad), the BA notes that the EPC provides a complete system for determining whether a priority right has been correctly claimed, and that the issue may be resolved by the EPO without reference to national law. The BA also notes that it cannot find any merits in the references by the parties to national law as regards some aspects of real property. Perhaps unsurprisingly, the BA’s initial thoughts therefore do not appear to be favourable to the Broad.

The BA concludes that the outcome of the case will turn upon the pros and cons of altering the EPO’s practice on how the Article 87 EPC is interpreted. As neatly summarised by the BA, according to the Opponents, factors possibly speaking for maintaining the current EPO practice are:

“The practice is long standing.
It may protect joint applicants against sharp practice by a sub-group of the joint applicants.
The situation of the patentees in the present case could have been avoided if they had shown sufficient foresight.
There is a risk of multiple subsequent applications.
There could be other possible negative consequences of changing this practice.”

The BA also summarises some factors possibly in favour of changing the present practice, as argued for by the Broad Institute:

“The joint applicant for the priority application who is not mentioned in the subsequent application would be in a better position: it would at least have the possibility of asserting its rights in any patent resulting from the priority application; the present practice means that loss of priority may be followed by loss of the patent.
The appellants’ approach is more in line with the aim of the Paris Convention, that of facilitating international patenting as it relaxes the required formalities whilst safe-guarding those elements necessary for recognising a priority right under Article 87(1) EPC”

The BA concludes that “[i]t will probably be necessary to weigh up, amongst other considerations, the above factors in order to reach a decision”.

A large audience of interested parties is expected in Munich in early January. The hearing will be held in room 128 of the Isar Building.

Stay tuned to IPKat for further updates!

[Update: the communication has now been published on the register, here]

Nexus

Clarity is needed from the Boards of Appeal on the EPO's "co-applicant approach" to priority

BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18)

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