Solving the PCT Priority problem


Chiara Banas

Solving the PCT Priority problem

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The ‘joint applicants’ approach to PCT applications would provide an elegant solution to issues of who is entitled to priority claims in PCT applications, suggests Chiara Banas of EIP.

G1/22 and G2/22 are two pending referrals to the Enlarged Board of Appeal (EBA) regarding entitlement to priority. The two questions that were referred were:

  1. Does the European Patent Convention (EPC) confer jurisdiction on the European Patent Office (EPO) to determine whether a party validly claims to be a successor in title referred to in Article 87(1)(b) EPC?
  2. If question I is answered in the affirmative:

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) EPC in the case where

  1. 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
  2. the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
  3. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

Article 87(1) EPC states that:

Enlarged Board of Appeal, PCT, industrial property, World Trade Organisation, utility model, patent application

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