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9 November 2020AmericasSarah Morgan

EPO reveals decision behind Broad patent revocation

The European Patent Office (EPO) has released the long-awaited reasoning for its decision to uphold the revocation of a Broad Institute CRISPR/Cas9 patent.

In January this year, the EPO’s Board of Appeal concluded that the Broad’s patent, EP2,771,468, lacked novelty due to an invalid claim to priority.

The decision affirmed EPO’s Opposition Division ruling to revoke the patent for lacking a valid priority claim in early 2018.

Late last week, the EPO released the reasoning behind its decision.

The core legal issue at the heart of the dispute is governed by article 87(1) of the EPC, which states that “any person” who has filed an application for a patent enjoys a right of priority during a period of 12 months from the date of filing for the first application.

The Broad had claimed priority from a US provisional filing, which was also filed in the name of an inventor-applicant who was not listed on the later European patent filing. The applicant had not transferred its priority right to the remaining applicants.

Reasoning

The EPO dealt with three questions in its reasoning.

First, it addressed whether entitlement to priority should be assessed by the EPO or in entitlement actions before national courts.

It concluded that article 87(1) both “empowered and obliged” the office to assess the validity of a claim to priority, according to a press release from the EPO.

Second, the board tackled how to interpret the expression “any person” in article 87(1). Broad had argued that that the ordinary meaning of “any” in “any person” is not “all”.

Under the established practice, a valid priority claim requires that all persons listed as applicants for the priority application are also listed as applicants for the subsequent application.

“It is undisputed that there is no case law, either of the EPO or of national tribunals, that clearly and unambiguously adopts the interpretation of ‘any person’ proposed by the appellants,” said the board.

It added: “The board notes that 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.”

In affirming the “all applicants” approach, the EPO said that while arguments can be made for the Broad’s “one or more applicant” approach, stronger arguments for the “all applicants” approach can be made.

Third, the EPO looked at whether national law (US law in this case) governs the determination of “any person” who has “duly filed” under article 87.

The board concluded that the Paris Convention was the law which determines who “any person” is.

Ultimately, the EPO found that priority had not been validly claimed from several US provisional applications and dismissed Broad's appeal against the opposition division’s decision to revoke the patent.

At the opening of the proceedings in January, the board has also said that it intended to refer at least three questions to the EPO’s Enlarged Board of Appeal.

However, the board then found a referral was not necessary, because article 87(1) had been “interpreted consistently by the EPO and the questions raised could be answered beyond doubt by the board itself”.

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More on this story

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16 January 2020   In a dramatic reversal, a European Patent Office’s board of appeal has upheld the revocation of a Broad Institute CRISPR/Cas9 patent.
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23 January 2020   A competitor of the Broad Institute has said that a European Patent Office ruling last week has weakened the CRISPR/Cas9 patent owner’s negotiating hand in any future settlement between the parties.

More on this story

Europe
16 January 2020   In a dramatic reversal, a European Patent Office’s board of appeal has upheld the revocation of a Broad Institute CRISPR/Cas9 patent.
Europe
23 January 2020   A competitor of the Broad Institute has said that a European Patent Office ruling last week has weakened the CRISPR/Cas9 patent owner’s negotiating hand in any future settlement between the parties.