Introduction
In the decision T 2516/19, the Board of Appeal decided on the central issue revolving around the entitlement to priority in a high-profile CRISPR patent held by the Broad Institute, MT, and Harvard. This case provides important insights into how the Board of Appeal applied recent Enlarged Board of Appeal case law (G 1/22) concerning the presumption of priority rights and retroactive transfer of such rights. The decision sheds light on arguments presented by both the opponents and the patent holders, culminating in the board’s conclusion.
Summary of the Invention
The patent under consideration (EP 2896697) relates to the CRISPR-Cas9 gene-editing system, specifically for use in eukaryotic cells. The invention is rooted in earlier US patent applications, particularly focusing on optimized guide compositions that allow targeted sequence manipulation within these cells. The invention claims priority from a series of US provisional applications, which introduced innovative methodologies in genetic engineering.
Key Legal Arguments and the Board’s Decision
Opponent’s Arguments
The opponents challenged the validity of the priority claim, arguing that priority from US provisional applications P1, P2, P5, and P11 was not validly claimed because one of the inventors, Dr. Marraffini, was not listed as an applicant in the European Patent (EP 2896697). The "all applicants" rule, derived from EPC case law, requires that all applicants of the priority document be named or have transferred their rights in the subsequent application.
Patentee’s Position
The patentees contended that the right to priority was validly transferred, citing a settlement of an inventorship dispute that had occurred in the US, which included Dr. Marraffini. According to the patentees, the settlement implicitly ensured the transfer of any relevant priority rights, thus complying with European requirements.
Board’s Decision
The board relied heavily on the recent decision of the Enlarged Board of Appeal in G 1/22, which established a presumption that the right to priority exists unless explicitly rebutted. According to G 1/22, retroactive transfers of priority rights are acceptable, and an implicit agreement regarding the transfer of such rights could be presumed in this case. The board found that there was no evidence to rebut the presumption that the patentees were entitled to claim priority from P1, P2, P5, and P11. As a result, the Board set aside the Opposition Division’s decision and remitted the case for further prosecution.
Lessons to be Learned
The decision highlights several important points for practitioners:
- Presumption of Priority Rights: The decision reaffirms that under G 1/22, a presumption exists that the right to priority is valid, even in cases where not all applicants from the priority document are listed in the European application. This presumption can only be rebutted with clear evidence.
- Retroactive Transfers of Rights: The Board confirmed that retroactive transfers of priority rights are permissible under the EPC, ensuring that disputes settled post-filing can still provide valid claims to priority.
- Strong Burden of Proof: The party challenging the priority right must provide substantive evidence to rebut the presumption, which strengthens the position of patentees in maintaining priority claims.
Contact
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.