Priority Entitlement in Europe - EPO Board of Appeal decides to revoke CRISPR patent
As reported in the recent edition of the HMC Life Sciences Newsletter, the EPO Board of Appeal hearing for European Patent No. 2,771,468, the CRISPR priority rights case, was held last week. The hearing took place over 4 days, involved 9 opponents and very important CRISPR technology. This case related to the issue of priority entitlement and the problems patentees can encounter when a successive chain of title from the inventor to the applicant cannot be established. In this case it was the failure of the Broad Institute to include a Rockefeller University inventor of a priority US patent applications in its European patent application that led to the rejection of the patent now under appeal. This is in contrast to the corresponding US case which dealt with questions of obviousness rather than procedural issues concerning priority rights.
On 16 January 2020, the EPO Board of Appeal dismissed the Appeal and upheld the decision of the Opposition Division to revoke the patent for lack of novelty.
Whilst we wait for the written decision of the EPO Board of Appeal, the take home message from this case is for applicants to ensure that ensure there is clear chain of title from each inventor to each successive applicant put in place prior to filing a PCT or European application. This is particularly important where the initial application is a US provisional application and, as in this case, there are a number of different priority applications. Problems with priority entitlement usually only come to light during post-grant proceedings, however, getting the priority claim right at the time of filing will ensure that intervening disclosures cannot be cited. Furthermore, if getting an assignment executed before the filing of the PCT or European patent application is not possible, we would recommend ensuring the PCT or European patent application is filed in the same names as the priority application and assigned later.
If you have any queries on this issue, please contact the author Anna Hally or any one of our European Patent and Trade Mark Attorney team at Hanna Moore + Curley.
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