Priority Validity in the context of re-establishment of rights

French version available here

Introduction

In decision T 1482/21, the European Patent Office’s (EPO) Board of Appeal examined the priority claim associated with European Patent Application No. 15158482.8, specifically regarding whether the priority right was validly claimed and if the Receiving Section had the authority to restore it.

Background of the Priority Issue

The contested patent relates to an apparatus for simultaneously filling multiple containers with liquid, particularly suited for applications like water balloons. The patent owner, Tinnus Enterprises, LLC, initially filed for the invention under an earlier application. Due to a lapse in the 12-month priority period outlined in Article 87(1) EPC, the patent owner requested re-establishment of rights to restore the priority claim, which was granted by the EPO’s Receiving Section. This re-establishment meant the patent could claim the priority date from the original application, a decision that became central to subsequent opposition and appeal proceedings.

Opponent's Arguments on Priority

The opponents argued that:

1. Lack of Competence by the Receiving Section: They contested the authority of the Receiving Section to grant re-establishment of rights, arguing that it was not within the Receiving Section’s competency to decide on priority re-establishment, as that could impact the legal standing of the patent in future opposition and appeal processes.
2. Invalidity of the Claimed Priority: The opponents further claimed that the features in some of the granted patent claims differed from the earlier application, making it ineligible to claim priority. Specific differences highlighted included features such as the juxtaposed arrangement of tubes, which opponents argued lacked clear basis in the initial application, leading to potential loss of priority entitlement for certain claims.

Patentee's Defense of Priority

The patentee responded that:

1. Competency of the Receiving Section: The Receiving Section had the authority to examine requests for re-establishment of rights under Rule 136 EPC concerning procedural timelines, including the priority period. The decision to restore priority was final and not subject to reassessment during opposition or appeal.
2. Consistency of Claimed Features with the Earlier Application: The patentee maintained that the claimed invention’s features in the final patent were directly supported by the original application, ensuring the priority claim’s validity. They argued that the claimed configuration—specifically the simultaneous filling and sealing mechanism—was disclosed in the initial application.

Board’s Decision on Priority

The Board upheld the Receiving Section's authority to grant re-establishment of rights, affirming that:

• Rule 136 EPC Competency: Under EPC rules, the Receiving Section is responsible for examining formalities up until the Examining Division takes over substantive examination. This scope includes re-establishment of rights related to missed priority deadlines, so the Receiving Section’s decision to restore priority is valid.
• Finality of the Receiving Section’s Decision: Once granted, the decision on priority re-establishment is final and binding in subsequent proceedings, including oppositions or appeals, as the Receiving Section’s decisions cannot be revisited by other EPO departments.

Lessons to be learned

This decision underscores crucial considerations regarding priority claims in European patents:

1. Re-establishment of Rights: Applicants should be aware that requests for re-establishment of rights can have substantial implications for the enforceability of priority dates. If granted by the Receiving Section, these decisions are final and cannot be revisited during opposition or appeal.
2. Comprehensive Disclosure in Initial Filings: To secure and defend priority, it is essential to ensure the original application comprehensively supports all claimed features. This minimizes risks of opponents contesting priority due to alleged inconsistencies.

In summary, decision T 1482/21 reinforces the authority of the Receiving Section in handling procedural priority matters and highlights the importance of thorough initial disclosures to safeguard priority claims.

Link to the case : HERE 

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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.