T844/18 – the CRISPR case – confirms legal certainty in the EPO’s consistent interpretation of priority under Art. 87(1) EPC

G. Schlich (GB)

For a valid claim to priority1 under the EPC, the later application has to be filed by the same applicant or the same applicants^{This phrase referring to the same applicant(s) or their successor(s) in title} (meaning all of the applicants, omitting none) who filed the earlier application. Thus, for a first filing by multiple applicants but a subsequent application by only one or some of those applicants it has to be shown that the priority right held jointly by the multiple earlier applicants had been transferred to the sole applicant or the group of applicants^{T788/05, T382/07}.

Overview of decision

All those with an interest in the technology referred to generically as CRISPR^{Various types exist though most patents focus on CRISPR/Cas9 and its genome editing applications} will be aware of a plethora of patents and patent applications covering all manner of its fundamental aspects and variations thereof and may also be aware of the many related opposition and appeal proceedings at the EPO concerning CRISPR patents.

In October 2020 the Nobel Prize in Chemistry was awarded to Emmanuelle Charpentier and Jennifer Doudna “for the development of a method for genome editing”, noting these two “discovered one of gene technology’s sharpest tools: the CRISPR/Cas9 genetic scissors”^{https://www.nobelprize.org/uploads/2020/10/press-chemistryprize2020.pdf and https://www.nobelprize.org/uploads/2020/10/advanced-chemistryprize2020.pdf}.

In fact, while many CRISPR patents have already been variously upheld or revoked or maintained in amended form at opposition level, there have been (to my knowledge) no final decisions by EPO Technical Boards of Appeal (TBA) concerning technical elements of CRISPR technology. There has been, however, a final TBA decision concerning legal elements of the law of priority under the EPC arising from one CRISPR patent.

This decision, T844/18, addressed whether the EPO has the power to examine priority, how “celui qui” is to be interpreted and which law determines the identity of the person who “duly filed” the earlier application from which priority is claimed (see The Three Questions later in this article).

While the decision was announced orally at the end of the hearing on 16 January 2020 and published in the minutes less than a week later on 23 January 2020 it was not until nearly ten months later, on 6 November 2020, that the TBA formally (and finally) handed down its written decision and confirmed revocation of the Broad Institute Inc’s CRISPR/Cas9 patent EP2771468^{In the name of The Broad Institute, Inc., Massachusetts Institute of Technology and President and Fellows of Harvard College}.

Much analysis was circulated in the period immediately following the oral decision. Herein, the formal, written decision is reported more or less without analysis: the decision speaks for itself.

The case at both opposition and appeal levels centred on interpreting Paris Convention Article 4A(1) and EPC Article 87(1) EPC, which read respectively (French and English for the former, English only for the latter):

“Art. 4A (1) Celui qui aura régulièrement fait le dépôt d’une demande de brevet d’invention, d’un modèle d’utilité, d’un dessin ou modèle industriel, d’une marque de fabrique ou de commerce, dans l’un des pays de l’Union, ou son ayant cause, jouira, pour effectuer le dépôt dans les autres pays, d’un droit de priorité pendant les délais déterminés ci-après”

• Paris Convention, Article 4A, Stockholm version, 1967, French text.

“Art. 4A (1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed”

• Paris Convention, Article 4A, Stockholm version, 1967, French text.

“Art. 87(1) Any person who has duly filed, in or for

1. any State party to the Paris Convention for the Protection of Industrial Property or
2. any Member of the World Trade Organization, 
   an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application”.

• European Patent Convention, Article 87(1), 2000, English text.

The EP patent in suit^EP2771468 originated from a PCT filing, with the consequence that the Paris Convention prevails^{PCT Art. 8(2)(a)} with respect to the right to claim priority, but the decision found, in effect, this made no difference to the interpretation of Article 87(1) EPC, noting:

“… in order to interpret ‘any person’ in Article 87(1) EPC, it is necessary to interpret the legal concept of ‘any person’ in Article 4A Paris Convention, the interpretation given in both treaties needing to be the same”^{T844/18 (hereinafter “Decision”), para. 36}.

The decision also centred on the EPO’s ‘all applicants’ interpretation of Article 87(1) EPC, namely, to require there to be identity of applicant(s) – taking account of successor(s) in title – between the applicant for the earlier priority–establishing application and the applicant for the later, priority–claiming application^{See e.g. Case Law of the Boards of Appeal, Ch. II, D, 4.2 “Identity of applicant”}.

In relation to the priority provision in EPC Article 87(1), the TBA stated:

“the instances of the EPO have without exception adopted a consistent interpretation of Article 87(1) EPC since the inception of the European patent system”^{Decision, para. 121},

and in relation to the EPO’s ‘all applicants’ approach:

“[t]he continuation of such long standing and rationally based practices can be considered as an aspect of legal certainty”^{Decision, para. 86}.

The patent was revoked in opposition for lack of novelty, with the priority claim invalid. The Patentees appealed and the appeal was dismissed, the Board confirming the earlier decision of the Opposition Division and agreeing with the EPO’s long-standing practice in interpreting Paris Convention Art. 4A(1) and EPC Article 87(1):

For a valid claim to priority under the EPC, the later application has to be filed by the same applicant or the same applicants^{This phrase referring to the same applicant(s) or their successor(s) in title} (meaning all of the applicants, omitting none) who filed the earlier application. Thus, for a first filing by multiple applicants but a subsequent application by only one or some of those applicants it has to be shown that the priority right held jointly by the multiple earlier applicants had been transferred to the sole applicant or the group of applicants^{T788/05, T382/07}.

In more detail

Missing Applicant

Of course, many prosecutions, oppositions and appeals turn on whether a priority right is validly claimed. Examination of priority under the EPC allows the priority date to be substituted for the filing date for determining the prior art^{EPC Art. 89} and includes determining whether the later application is directed to the ‘same invention’^{EPC Art. 87(1)(a) “… in respect of the same invention, a right of priority …”} and has been filed by the ‘same applicant’^{EPC Art. 87 (1)(a) “Any person who has duly filed … an application for a patent … shall enjoy … a right of priority”}.

In this case, the applicants for the patent in suit were not the same as those for the priority application^{This is a simplification. For more details see Decision, para. II}. Rather, one applicant was missing from the patent application and had not transferred its priority right to the remaining applicants^{See e.g. EPO explanation at https://www.epo.org/law-practice/case-law-appeals/communications/2020/20201106.html}. This omission was, however, a “deliberate choice”^{Decision, para. 60} of the Patentees.

The Three Questions

The Patentees argued the priority right was nevertheless valid, dividing its submissions into three prongs^{Decision, Section X}, characterised by the TBA in its decision as the questions:

1. Should entitlement to priority be assessed by the EPO?
2. How is the expression “any person” in Article 87(1) EPC to be interpreted?
3. Does national law (in this case US law) govern the determination of “any person” who has “duly filed” in Article 87(1) EPC?

In the discussion below I have separated out the three answers, though in the proceedings many lines of argument were interwoven as they applied to more than one question.

Importance of Formal Requirements

The Patentees’ submissions covered how the test under Article 87(1) EPC included formal aspects. The Decision divided the test into four requirements, namely ‘who’, ‘where’, ‘what’ and ‘when’^{Decision, para. 12}.

Noting that the position of the Patentees was that the EPO should not concern itself with the “who” issue, the Board disagreed, stating that the EPC clearly sets out a requirement that the EPO examines the “who” issue of priority entitlement^{Decision, para. 14} to determine who is the “any person” of Article 87(1) EPC.

As to the extent to which “who” is examined, the decision noted that the EPO does not go beyond a formal assessment of the person who has performed the act of filing the patent application^{Decision, para. 15}. The Board noted that the EPC sets out many formal requirements and the failure to comply with a formal requirement of the EPC can destroy a patent or patent application, irrespective of whether it satisfies the substantive requirements for patentability^{Decision, para. 16}.

The Board was unsympathetic with the argument that formal matters can lead to loss of rights, stating the Patentees:

“…chose the named applicants in a way that did not comply with the well-established practice of the EPO”^{Decision, para. 16}

and

“It is not for the Board to repair such errors, omissions or deliberate choices of a party”^{Decision, para. 16}.

Concerning the object and purpose of the Paris Convention, the Patentees argued it would be contrary to the convention if a formal requirement could destroy patent rights. The Board disagreed, holding that:

“the difficulty that the Board has with such an argument is that any formal requirement for patenting […] could be considered contrary to the above object and purpose”^{Decision, para. 48}.

– The answer to the first question was thus, essentially, “yes”.

“Celui qui”

The authentic text of the Paris Convention is French, more or less unchanged since 1883^{Decision, para. 53} and only translated into English in 1958^{Decision, para. 41}; hence, much focus came to bear on the words “celui qui” from its Article 4A, the same words being found unchanged today in the French text of Article 87(1) EPC. While these French words were said not on their own to be determinative, the Board was nevertheless able to say:

“the Board is of the view that the authentic French text of the Paris Convention tends, if anything, to support the ‘all applicants’ approach”^{Decision, para. 42}

and more positively that:

“the ‘all applicants’ approach is certainly a plausible interpretation of this term”^{Decision, para. 83}.

Decades of EPO Practice vs. A Request for a Change

Ultimately, the Patentees’ submissions and the case law led the Board to identify parallels. The Board was faced with, in its own words, “many decades of EPO and national practice supporting the ‘all applicants’ approach” and noted “no evidence on file that any states that are current member states of the EPC have ever adopted anything but the ‘all applicants’ approach”^{Decision, para. 85}.

The parallel from the Patentees’ side was, the Decision noted:

“the appellants do not contest that the practice of the EPO is, and has been, to require identity between the Applicants for the priority application and the Applicants for the subsequent application”

and

“the appellants argue for a change of practice”^{Decision, para. 27}.

But the Board found in response that:

“the current practice can be considered to have a rational foundation that derives from a conventional approach to interpreting legal texts”

and

“as the priority provisions of the Paris Convention have remained essentially unchanged since 1883, the Appellants are faced with over 100 years of consistent case law and practice adopting the ‘all applicants’ approach that they need to show as incorrect. This is a considerable burden”^{Decision, para. 53}.

Public Policy Issues: sinister acts and double patenting

Various public policy points were made by the Patentees, and the Board dealt with these one-by-one. One characterization of the fact pattern was:

“A and B are applicants for the priority application. A alone is the applicant for the subsequent application. Is a priority claim valid even without any assignment of priority right from B to A?”^{Decision, para. IX}

To the argument that “one of the applicants is holding the other[s] to ransom by refusing to join in as an applicant for the subsequent application”^{Decision, para. 32} the Board replied:

“[allowing A to file alone without involving B] … could of course result from an agreement between A and B, it could however equally result from more sinister circumstances, such as A trying to deprive B of its rights to a patent in another country. This second scenario can hardly be thought of as one that the law should seek to protect”^{Decision, para. 49}.

T15/01 has held that there is no doctrine of the exhaustion of the priority right, and the Board agreed, saying:

“the priority mechanism was not meant to, and in certain circumstances is unable, to prevent multiple applications”,

but found:

“the possibility of a multiplication of proceedings and double patenting identified by the opposition division to be plausible and to be avoided”^{Decision, para.s 81 and 84}.

In their conclusions to this section of the decision Board noted:

• “the ‘all applicants’ approach has been applied […] without exception since at least the early twentieth century, by states that are currently member states of the EPC, and by the EPO since its inception”
• “such a practice can be seen to have a rational basis”
• “[this practice] is based on a reasonable interpretation of the legal texts”
• “The bar to overturning long established case law and practice should be very high because of the disruptive effects a change may have”
• “The continuation of such long standing and rationally based practices can be considered as an aspect of legal certainty”^{Decision, para.s 86 and 53}.

– The answer to the second question upheld the existing law and practice.

The Paris Convention vs. National (in this case, US) Law

The third question addressed the extent to which national law could be used to determine the answer to the question of ‘who’ filed the first priority-establishing patent application.

The Board accepted national law determines what is a duly filed application and whether a filing is one that establishes a filing date^{Decision, para. 106}.

The Board concluded, however, with respect to who duly filed the application that:

“the Paris Convention is part of the ‘supreme law’ of the land in the US”^{Decision para. 104}

and, noting that the Paris Convention makes no reference to the inventor or the applicant but refers instead to the person who has carried out an act, of filing a patent application^{Decision, para. 108}, that:

“It is thus clear that the Paris Convention, being an integral part of US law, determines who “any person” is, and this determination is a purely formal one”^{Decision, para. 110} {emphasis added}.

This position was also found to be the intention of the drafters of the Paris Convention^{Decision, para. 109}.

We are then left with what can only be a warning:

“it is clear that applicants wishing to use US provisional applications should be aware of the difficulties they may face if they use these applications to claim priority for a European patent application. This is simply a consequence of the US’s adhesion to the Paris Convention. The Notice from the President of the EPO^{OJ EPO, 1996, 81} cannot exempt the EPO from applying the Paris Convention and there is no evidence that this was its intention”^{Decision, para. 114}.

– The answer to the third question found no role for national law but a formal role for the Paris Convention.

The Three Answers

The TBA’s decision, already reported previously on the basis of the minutes of the proceedings, published on 23 January 2020, was then enunciated as follows^{Decision, Headnote} (using the same numbering as the questions posed) in the three answers:

1. The Board is empowered to and must assess the validity of a priority right claim as required by Article 87(1) EPC.
2. The Board’s interpretation of the expression “any person” in Article 87(1) EPC confirms the long-established “all applicants” or the “same applicants” approach.
3. The National law does not govern who is “any person” as per Article 87(1) EPC, the Paris Convention determines who “any person” is.

EBA Referral?

Two possibilities for a referral exist under the EPC: (i) ensuring uniform application of the law, and (ii) if a fundamental point of law arises^{EPC Article 112}, and the Patentees raised both as grounds for a referral.

The Board held:

“The uniform application of the law point does not apply in this case as the instances of the EPO have without exception adopted a consistent interpretation of Article 87(1) since the inception of the European patent system^{Decision, para. 121}”

and

“The Board has a discretion whether to refer questions, even if a point of law of fundamental importance is concerned […] In this case the Board has been able to answer the questions raised beyond doubt, hence no referral is necessary”^{Decision, para. 122}.

The appeal and the request for a referral were thus both dismissed, the Board confirming the earlier decision of the Opposition Division and agreeing with the EPO’s long-standing practice in interpreting the Paris Convention Article 4A(1) and the EPC Article 87(1) and confirming that the EPO’s interpretation of priority under Art. 87(1) EPC provides consistency and legal certainty.

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