CLR II D 2.2.1 General

Pursuant to Art. 87(1) EPC, a right of priority originates in the applicant of a first application. Therefore, in principle, the applicant has to be the same for the first application and for the subsequent application for which the right of priority is invoked. However, pursuant to Art. 87(1) EPC, the right of priority may also be invoked by the "successor in title" of the person who has filed the first application. By reference to the "successor in title", it is recognised that the right of priority, being a legal right, may be transferred from the original applicant to a third person. It is generally accepted that the right of priority is transferable independently of the corresponding first application and may furthermore be transferred to a third person for one or more countries only. It is an independent right until it is invoked for one or more later applications, to which it becomes an accessory, and it has to be distinguished from the right to the patent deriving either from substantive law or from the status of being the applicant of the first application (T 205/14, with further references; see also T 969/14; and T 1201/14 with further references).

The transfer must have occurred before the filing date of the subsequent application. According to T 1201/14, it was clear from the wording of Art. 87(1) EPC 1973 alone that the succession in title must have already taken place when the subsequent application was filed. The board in T 577/11 already confirmed that a succession in title that occurred after the filing date of the subsequent application was not sufficient to comply with the requirements of Art. 87(1) EPC 1973. This finding was in line with Art. 4 Paris Convention and the legislative history of these provisions.

Where there were several applicants for the first application and one of them is the sole applicant for the subsequent application, the other co-applicants must have transferred the joint priority right to the sole applicant of the subsequent application before its filing date (see T 382/07, with further references).

See also the decisions in chapter II.D.4. "First application in respect of the invention", II.D.4.2. "Identity of applicant".

The board in T 969/14 held, with reference to Enlarged Board decision G 1/15 ("Partial priority", OJ 2017, A82), that once it is acknowledged that partial priority rights exist they must also be transferable separately. This, however, has consequences for the remaining priority right, because the assignor is left with a limited right. On partial and multiple priorities, see also in this chapter II.D.5.

Source: http://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_ii_d_2_2_1.htm

Date retrieved: 17 May 2021

14 references found.

Click X to load a reference inside the current page, click on the title to open in a new page.

EPC Articles

Offical Journal of the EPO

Case Law Book: II Conditions to be met by an Application

Case Law of the Enlarged Board

General Case Law