The EPO’s 10-day-rule will be abandoned from 1 November 2023. A safeguard mechanism will be effective in case a document is received late (more than 7 days late), with the burden of proof in case of disputed notifications being with the EPO. The new regulation applies to documents notified on or after 1 November 2023. See OJ EPO 2023, A29 for more details and some examples.
Enlarged Board of Appeal on transfer of priority right
The recent decisionby the Enlarged Board of Appeal G1/22 and G2/22 has made it easier to demonstrate a valid transfer of priority right. This is good news for patent applicants and patentees who may have struggled with the previous requirements for demonstrating a valid transfer. According to the EPO’s summary of the key considerations, “entitlement to priority is presumed to exist if the formal requirements for claiming priority are fulfilled. This presumption is justified because (i) all parties involved normally have an interest that an application may benefit from a priority right, (ii) there are no formal requirements for the transfer of priority rights, and (iii) the applicant of the priority application has to provide support to the applicant claiming priority (e.g. by providing unpublished documents).”
However, it is important to note that the time of transfer must still pre-date the subsequent filing. This means that while the process of demonstrating a valid transfer may be easier, the timing of the transfer is still crucial. More details can be found in the many comments that were already published on these decisions. See, e.g., the DeltaPatents Blog on decisions G1/22 and G2/22.
EPO Examination Matters ’23
The EPO hosts a great hybrid format conference Examination Matters 2023. The event is very interactive and provides lively discussions on topics of practical relevance for patent practitioners (both substantive and procedural). Check out the conference materials once they become available.
EPO T 1946/21 – transfer of priority right
In the recent Board of Appeal decision T 1946/21, Board of Appeal 3.2.03 held that it is sufficient for a transfer of the priority right to be effected on the filing date of the subsequent application, provided that applicant/patentee can demonstrate that the transfer had been effected at the time at which the subsequent application was filed. The Board did not follow appellant’s argument that the transfer had to be effected at the latest on the day preceding the day on which the subsequent application was filed.
Beware that (i) the EPO Guidelines (section A.III.6 in GL version 2023) include language (“the transfer of the application including the priority right (or of the priority right as such) must have taken place before the filing date”) that suggests that stricter criteria may apply, and (ii) national case law of EPC member states (such as BPatG 11 W (pat) 14/09, point II.B.2 a cited in T 1946/21) may require the transfer to have taken place at the latest on the day preceding the filing date.
Thus, if time allows, it is prudent to mitigate potential issues relating to the validity of the priority claim in Europe by (a) effecting a transfer of the priority right to the applicant of the subsequent application at least on the day before the filing date, or (b) filing the subsequent application with the applicant of the priority application being named at least as a co-applicant in the subsequent application.
T 1946/21 also includes interesting passages relating to partial priority issues in light of G 1/15.
EPO – strawman’s appeal fee
A new EPO Boards of Appeal decision T 84/19 deals with an interesting question relating to appeal fees. The decision holds that an opponent who is a natural person or otherwise entitled to benefit from the reduced appeal fee does not have to pay the full appeal fee, even if there is a secret sponsor (akin to the ‘real party in interest’ in post-grant proceedings in other jurisdictions). This holds as long as the opposition does not constitute a circumvention of the law regarding the entitlement to pay a reduced appeal fee.
By way of background for the readers familiar with or otherwise interested in USPTO post-grant proceedings: According to decisions G 3/97, G 4/97, it is not required that the ‘real party in interest’ be named in EPO opposition proceedings. Thus, the situation may (and does) occur in which an opponent as party to the EPO proceedings may be different from the person interested in the revocation or amendment of the patent.
EPO project ‘Bringing Teams Together’
The EPO’s project “Bringing Teams Together” appears to face criticism from within the EPO. Various social media and patent-related news sites cover the sarcastic letter allegedly drafted by an unnamed EPO staff member (see, e.g., Wolter Kluwer blog).
EPO Opposition Matters 2022 conference
Very interesting professional training event at the EPO – Opposition Matters 2022. Lots of practical advice as regards opposition proceedings in general, and specifically oral proceedings and amendments of a party’s case. Very engaging presenters and very useful practical tips. The event materials and recordings of the key presentations will be made available at the EPO e-learning center. You may want to check this out if you are involved in EPO oppositions.
EPO Case Law Conference 2022
Interesting (online) educational event at the EPO yesterday and today on the case law and practice of the Boards of Appeal.
As regards procedural aspects, appellants and defendants should be aware of the way in which the Boards apply the rules relating to late-filing (Art. 12, 13 RPBA 2020). See, e.g., T 2843/19, T 1707/17, and T 1869/18. While a party to appeal proceedings has a right to react to new developments (Art. 113 EPC), the party must exercise this right as soon as possible in the proceedings. Thus, it is advisable to react in a timely manner to new developments that may be brought about by the other party’s grounds of appeal or response brief, or the Board’s communication under Art. 15(1) RPBA 2020.
US applicants – beware of the EPO’s ‘due care’ criterion
EPO Board of Appeal decision J 8/21 discusses the relevant criteria for re-establishment of rights (restitutio ad integrum). In the matter under appeal, the USPTO as Receiving Office of a PCT application decided to restore the right of priority based on the finding that the criterion for restoration applied by it was satisfied, namely that the failure to file the international application within the priority period had been unintentional. This decision of the USPTO is not effective in the EPO which applies the stricter ‘due care‘ criterion (R. 49ter.1(b) PCT). The Board held that the EPO was right in refusing the request for re-establishment of rights by the Designated Office under R. 49ter.2 PCT when applying the ‘due care‘ criterion. The Board noted that, contrary to applicant-appellant’s arguments, there can be different results when two different patent offices apply different criteria, and that this is inherent to the PCT system.
The decision illustrates that applicants should be aware of the fact that a re-establishment of rights by the USPTO as Receiving Office under the ‘unintentional’ criterion is not effective in EPO proceedings which applies the ‘due care’ criterion.