Solving the PCT Priority problem

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:

Any person who has duly filed, in or for

(a) any State party to the Paris Convention for the Protection of Industrial Property or

(b) any Member of the World Trade Organisation,

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.

Background

As shown by the figure below, the applications in question are at the European stage of an application under the Patent Cooperation treaty (PCT) and its divisional applications. These applications claim priority from a priority application that lists Zhong, Rother, and Wang as applicants.

The PCT application when it was filed, listed:  Zhong, Rother, and Wang as applicants for the US only; and Alexion Pharmaceuticals and The University of Western Ontario as applicants for all other designated states (including EP and subsequent EP divisional applications).