PCT application - does the principle of joint applicants apply?

In general, the principle “joint applicants approach” to European patent applications. But does this also apply to an international PCT application? The EPO has recently decided to refer this question to the Enlarged Board of Appeal.

Validity of the priority claim contested

The EPO’s current decision (dated 28 January 2022, EPO decision T 2719/19 (Prolongation of survival of an allograft/ALEXION)) came about in invalidity proceedings against European Patent No. 1 755 674, which was revoked by the interlocutory decision of the Opposition Division: The validity of the priority claim was successfully challenged and, as a result, the novelty of the patent was denied.

The facts of this case are quickly recounted and occur more frequently in a similar form; there have been disputes over correct applicant designation before (the CRISPR decision of 2018 is particularly notable in this context, we reported), and there are also other such disputes pending before the EPO. There have been discrepancies in terms of applicants between the claimed priority application and the PCT application, in which Alexion Pharmaceuticals, Inc. and the University of Western Ontario are the patent applicants alongside

Applicants of the priority and PCT application: Discrepancies

The priority application was filed in the names of the inventors R.P. Rother, H. Wang and Z. Zhong; however, the PCT application names these three as inventors and as applicants by designation only for the United States of America (US). In addition, the PCT application names Alexion Pharmaceuticals, Inc. and the University of Western Ontario as applicants for all designated states except the US. The patent in suit names Alexion Pharmaceuticals, Inc. as patentee and R.P. Rother, H. Wang and Z. Zhong as inventors.

The priority claim was invalid, the applicant had successfully argued in the invalidity proceedings against the EP patent, because only the priority right of the inventor Rother had been assigned to the appellant before the filing of the PCT application. There had been no assignment of the priority rights of inventors Wang and Zhong to the appellant or the University of Western Ontario before the PCT application was filed.

Alexion had filed an appeal against this decision of the Opposition Division, on which the EPO has now ruled – but with open questions of law relating to PCT applicants, which will now be referred to the Enlarged Board of Appeal.

Priority – same rules for EP and PCT applicants?

In General, applicants of a European patent application or the proprietors of a European patent who are not identically designated as applicants for all designated contracting states have been considered as joint applicants for the purposes of the procedure before the European Patent Office (EPO) under Article 118 EPC. According to the case law of the Boards of Appeal, decision T 1933/12 (T 1933/12, reasons 2.4.) the “joint applicants approach” was developed. Anyway, as the EPO said, it concerns, in the most simple case, the situation where a party A is applicant for the priority application and parties A and B are applicants for the subsequent application in which the priority right is invoked.

But does this rule for applicants also apply to an international (PCT) application for the European (EP) territory? After all, the international application has the effect of a regular national application on the filing date (Article 11(3) PCT and Article 153(2) EPC).

Alexion argued that it is sufficient that all inventors named as applicants of the priority application are also among the applicants of the later PCT application, even if only for the US designation. And the appellant essentially argues that the “joint applicants approach”, which is applicable to European patent applications, should also apply to PCT patent applications.

Questions referred to the Enlarged Board of Appeal

This case involves a legal question of fundamental importance, the EPO now ruled on 28 January 2022. This legal question on the applicant concept for PCT applications is relevant to a number of cases currently pending before opposition divisions and boards of appeal, the EPO added, citing cases T 2749/18, T 2842/18, T 1837/19 and T 845/19 as examples.

And,

For this reason, the EPO will refer the following questions to the Enlarged Board of Appeal:

Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?If the answer to question 1 will be affirmed
Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPCin the case where

a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

It now remains to be seen with interest what position the Enlarged Board of Appeal will take on these questions. The EPO itself considers it likely that question 1 will be answered in the affirmative, as it is a substantive requirement in Art.87(1) EPC.

In any case, the Enlarged Board of Appeal’s reply will close a legal loophole that has not yet been clarified – and this at a time when patent applications are constantly increasing globally, including PCT applications.

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