BOARD OF APPEAL - DECISION MARCH 22, 2017 - ASSIGNMENT OF PRIORITY RIGHT
Board of Appeal sends reminder that assigning a priority right in time is not to be considered lightly.
Retroactive assignment between companies from the same corporate group six days after the filing of the international application deemed insufficient.
In a decision published on 22 March 2017 (T 577/11), the Boards of Appeal of the European Patent Office again send a reminder to applicants that assigning a priority application in time and in proper format is crucial for the priority right. The decision and its reasons, running 104 pages in total, is interesting because it reviews in detail the different lines of argument put forward by the proprietor, makes a distinction between economic ownership to an application and the legal rights derived from it and shows the devastating effect that an improper assignment may have. Procedurally, the decision underscores the importance of timely submitting all arguments in appeal proceedings and also addresses the limited possibility of re-opening a debate.
The Boards of Appeal have previously applied a strict approach to the right of priority. If a priority application and a subsequent application are filed by different applicants, a valid transfer of the priority right should have taken place before the filing of the subsequent application (T 62/05 and T788/05). Such a transfer is also required within a corporate group (T 160/13).
In case T577/11, an Italian priority application had been filed by Tenaris Connections AG. The international application, claiming priority of this Italian application, was filed by Tenaris Connections BV. Three days after filing the international application, both companies signed an assignment with a retroactive clause.
During appeal, the Board decided not to admit new lines of argument because they were submitted too late in the proceedings. These arguments concerned a transfer by oral agreement and a transfer “manifested by conclusive action” under Italian law.
A first line of arguments considered by the Board was that no time restriction was derivable from the Articles governing the right to priority. Furthermore, as a declaration of priority needs only be submitted within 16 months for the priority application, a transfer with that time-frame should be sufficient.
There were also no adverse effects for third parties, as the application is only published at 18 months from priority. However, the Board did not agree and concluded that in the current case, in line with previous case-law, the simultaneous filing of the international application and the declaration of priority was the ultimate date for transferring the right to priority.
The second line of arguments was that transfer occurred with retroactive effect. The assignment, signed three days after the international application, contained a clause for retroactively transferring the economic ownership of the patents. The Board followed T 517/14 in that the European Patent Convention does not stipulate formal requirements for the transfer and that it is national law that governs the requirements for assigning priority applications. However, it concluded that under Dutch law, only the economic ownership and not the legal title was transferred with retroactive effect. As the Board was not convinced that the acquisition of economic ownership was to be seen as “succession in title” in the context of claiming priority, this second argument was also not accepted.
As a third line of arguments, the patent proprietor submitted that the transfer occurred under Italian law “by carrying out convincing behavior within a corporate group”, i.e. by actually filing the international application and claiming priority from the Italian application. Again, the Board did not follow the proprietor’s arguments. In particular, the Board pointed to a lack of any (admitted) evidence that there was a mutual agreement between the companies, such as a contract on cooperation or other communications concerning the patent applications. In addition, the language of the assignment (signed three days later) did not lead to an assumption that the transfer had already occurred earlier, such as by carrying out convincing behavior.
As the Board did not agree with any of the three lines of arguments from the proprietor, it concluded that the priority claims by the patent was not valid. Subsequently, the patent was considered to be obvious over a reference published between the priority filing and the filing of the international application. Therefore, the decision from the Opposition Division to revoke the patent was upheld.
In conclusion, this case again underscores the importance of transferring the rights to the priority application before filing the subsequent (e.g. international) application if the applicants of both applications differ. The language of the assignment itself is also of importance and, preferably, mentions the priority right explicitly.