OJ EPO 2017, A41 - Decision of Technical Board of Appeal 3.2.05 dated 14 April 2016

T 577/11[ 1 ]

(Language of the proceedings)

Composition of the board:

Chairman:

M. Poock

Members:

H. Schram
M. Blasi
P. Lanz
T. Karamanli

Patent proprietor/Appellant: Tenaris Connections Ltd.

Opponent/Respondent: Vallourec Oil and Gas France

Headword: Entitlement to priority

Keywords:

Admission of late-filed documents - no – Re-opening of the debate – Rule 106 EPC objection - dismissed – Oral submissions by an accompanying person - yes – Referral to the Enlarged Board of Appeal - no – Validity of the priority - no – Admission of the second and third auxiliary requests - yes – Novelty - yes (second auxiliary request) – Inventive step - no (all requests) – Reimbursement of the appeal fee - no – Apportionment of costs - no

Catchwords:

1. Continuation of the appeal proceedings after first oral proceedings before the board with the scheduling of second oral proceedings is not, as such, a reason for admitting new submissions filed after the first oral proceedings (see Reasons, point 2.3).

2. If the debate on a particular topic had been closed without announcement of a decision on the matter, the board has discretion over whether or not it re-opens the debate and over the extent to which it does so (see Reasons, point 3.1).

3. For a claimed priority to be valid pursuant to Article 87(1) EPC 1973, the applicant of a subsequent application claiming priority from an earlier application (priority application) who is not the person who filed the priority application must, when the subsequent application is filed, be that person's successor in title in respect of the priority application or of the right to claim priority. A succession in title that occurs after the filing date of the subsequent application is not sufficient to comply with the requirements of Article 87(1) EPC 1973 (see Reasons, point 6.5).

4. Where the applicant of the priority application and the applicant of the subsequent application contractually agree that (only) economic ownership ("economische eigendom" under Dutch law) of the priority application and the right to claim its priority is to be transferred to the subsequent applicant, this is not sufficient to consider the latter a successor in title within the meaning of Article 87(1) EPC 1973 (see Reasons, point 6.6.2).

 

 

[ 1 ] Please note that the catchwords do not form part of the decision; they serve only to draw attention to various significant aspects of it. The full text in the language of the proceedings is available free of charge on the EPO website (http://www.epo.org/law-practice/case-law-appeals/recent/t110577eu1.html).

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