Prioritising Priority – getting your procedural ducks in a row

In a previous article, we reported the outcome of the US interference proceedings in the ongoing dispute between the Broad Institute and the University of California Berkeley over who really “owns” CRISPR. Attention has now turned to Europe, where the Opposition Division of the EPO has issued a preliminary and non-binding decision on the patentability of Broad’s European patent EP2771468.

The decision highlights important legal principles relevant to all patent owners regardless of their technological background. This is because, at least at this preliminary stage, the outcome of the opposition appears to hinge primarily not on the traditional pillars of patentability, novelty, inventive step and sufficiency, but on the right to claim priority.

Although of course the Opposition Division’s (OD) preliminary and non-binding decision may yet be subject to change, the case highlights the importance of getting your procedural ducks in a row, and illustrates how patent protection for even the most brilliant of inventions can (potentially) be at risk owing to procedural inefficiencies.

The right to claim priority

Claiming priority is a time-limited right that enables an inventor to secure a priority date by filing a first application. The filing date can be subsequently “claimed” from a second filing made at a later date, effectively bringing the date against which patentability is assessed for the second application forward to the first. In general, for a valid priority claim, the second filing must be made within 12 months of the first. The first application must also be filed in a Paris Convention (PC) or WTO Member State.

The benefit of the priority system to inventors is several-fold. Perhaps most importantly, it can enable an inventor to secure the earliest possible priority date while allowing a degree of time for further improvements to the technology. These improvements can be incorporated into the second filing, and so long as the scope of protection is not changed, priority, or even partial priority, can be validly claimed. The early filing date might also be particularly important in competitive technology spaces, where the benefit of getting something on file before your competitors is abundantly critical.

So, providing that the second application is filed within 12 months of the first, is filed in a PC or WTO Member State, the content of the application is largely the same, and the same applicants’ or their successors’ in title file both the first and second applications, priority may be validly claimed.

The EPO’s current view is that for a priority claim to be valid, a second application must be filed in the name of all the applicants of the first application, or their successors in title. The chain of title from the applicants of the first application to a new applicant must be complete at the date of filing of the second application.

The Maraffini issue

The priority issue at hand was raised by several of the Opponents and is courtesy of a discrepancy between the applicants listed on each of the 12 priority filings and EP2771468. For simplicity’s sake, we shall focus on the two earliest priority filings, P1 and P2, and the inventor Mr. Maraffini, who is listed as an applicant on both. Neither Mr. Maraffini nor his successor in title, The Rockefeller University is named as an applicant of ‘468.

Thus in order for the ‘468 to validly claim priority from P1 and P2, there must be evidence of an assignment in the right to claim priority from Mr. Maraffini or The Rockefeller to one or all of the remaining co-applicants of ‘468. Importantly, the assignment must have taken place before the filing date of ‘468. At present there is no remedy available to retroactively assign the right to claim priority in an EP application.

Broad has so far not been able to furnish the EPO with satisfactory evidence detailing the required assignment of priority rights. Therefore, the priority claim from at least P1 and P2 is not considered by the OD to be valid, at this preliminary and non-binding stage of proceedings.

Entitlement vs. Priority

In their submissions to the OD after the priority issue had been raised, Broad focused their arguments on the entitlement to the invention. Their assertion being that Mr. Maraffini (or by association The Rockefeller University) did not contribute to the invention that was the subject of the claims of ‘468. Therefore, Mr. Maraffini is not entitled to be co-proprietor of ‘468. This view was backed up by several high profile expert views.

However, the preliminary decision reminds us that entitlement and the right to claim priority are two distinct legal issues, the first of which the EPO holds no competency, being a matter for national law, and the second of which jointly and non-separably vests in all co-applicants of the application from which priority is being claimed.

Therefore, regardless of the entitlement issue, in order to validly claim priority, the OD is of the opinion that the Broad should have obtained an assignment of the right to claim priority either from Mr. Maraffini or his successor in title, the Rockefeller University. Such an assignment could also have been completed solely for the purposes of claiming priority in an EP application.

As a consequence of losing the right to claim priority from P1 and P2 (and others for additional reasons), the priority date is currently deemed to be 17 June 2013, which brings into play several high profile publications. Broad may find it tough to assert that ‘468 is novel and inventive from the new priority date.

It must be said that the EPO has been very consistent with the application of the law of priority over the years, and as such the Maraffini issue is a significant barrier for the Broad to overcome in order to successfully maintain ‘468 in force. And even in spite of the redundancy of protection across the various Broad EP patents, if the view on priority is maintained at the oral hearing, then the loss of priority to P1 and P2 will ripple out to all of the Broad EP patents which currently claim priority from both of these priority filings.

Lessons to be learned?

Although of course the decision is preliminary and non-binding, it provides an important reminder that getting your procedural ducks in a row is vastly important for building a solid foundation to your patent portfolio.

Most of the time, claiming priority will be fairly straight forward, with a single applicant listed on a single priority filing and subsequent filing. The issue requires significantly more attention to detail when multiple priorities are being claimed and multiple applicants are listed.

So what can you do if you are a party to a research collaboration with similarities to the above scenario? Perhaps the simplest way to avoid priority issues is to establish early on who is entitled to the application and ensure the correct chain of title is in place, particularly if there is to be a change in applicant in the priority-claiming filing.  This is particularly relevant for US-derived applications, where the inventor is named as the applicant on the priority filing, but the employer is named as applicant on the priority-claiming application. An assignment of rights should be obtained prior to filing the priority-claiming application.

On a separate note, this case shows that challenging the formalities of claiming priority is a useful tool for opponents to introduce more prior art into EPO opposition proceedings, where there have been  relevant disclosures by the patentee or a third party between filing a first application and a second priority claiming application. It also serves as a reminder of a potential pitfall of publishing details of your inventions in the priority year.

If you have any concerns or questions about a priority issue, please contact the Contentious team, or your usual attorney at GJE.

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