EPO decision could trip up US patent defenders

At the European Patent Office (EPO), GlaxoSmithKline (GSK) challenged a patent owned by US research group the Institute for Systems Biology (ISB), on numerous grounds of opposition including lack of novelty and inventive step.

ISB’s application for a European patent (EP) is directed to the medical use of a peptide that induces an immune response and is based on an international patent application claiming priority of a US patent application filed in 2001.

Until recently, the US Patent and Trademark Office required that all patent applications name the inventor as the applicant, whereas international applications claiming US priority will often name a company, usually the inventor’s employer, as the applicant.

The named applicants of the US priority application and the EP application differed in this case. The opponent argued that in this situation ISB could be entitled to the filing date of the priority application only if it produced an assignment executed before the EP filing date, ie, a written transfer of the priority right executed in the priority interval.

While the patent was maintained in amended form by the EPO, the EPO accepted GSK’s argument on priority and decided that ISB is not entitled to the priority date. Evidence submitted showing that the inventor was an employee and was obliged to transfer the invention to ISB was apparently not considered sufficient.

Solveig Moré, a partner at Uexkull & Stolberg in Munich, explained that the decision is still open to review from the Board of Appeal.

“Where the applicants of priority and international or EP applications are different companies, there are decisions that require a written assignment of priority right executed within the priority interval.”

“Uexkull & Stolberg could not find any case law where a Board of Appeal explicitly commented on the requirements for documenting the transfer of the priority right in situations where the US priority application was filed by the inventor, and the Patent Cooperation Treaty (PCT) or EP application was filed by the employer,” Moré said. “In cases where the applicants of priority and international or EP applications are different companies, there are decisions that require a written assignment of priority right executed within the priority interval,” she continued.

“While, in our view, these are different circumstances, to be on the safe side, it might make sense to ask inventors of US priority applications to sign such a document in the priority interval—or to use the option of the new US rules and file priority applications with the legal entity employing the inventor as applicant.”

If the decision stands, it could introduce problems for other US patent holders defending their patents at the EPO, she said.

“Quite a number of US priority applications are filed in the names of the inventors, so similar problems may arise for these cases if there is intermittent art,” she added.

“This consequence may be avoided if either the transfer of priority rights is documented, or the priority applications are filed with the assignee as applicant, which is possible under the new rules.”