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In T0205/14 the board of appeal abandoned the older practise that the transfer of the right to the priority of an application needs to be formally proven. In this case the applicants filed a European patent application, which was based on an International application. The International application claimed the priority from two US provisional applications P1 and P2, both filed in the name of the three inventors. The European patent was granted and was opposed by several parties which inter alia by introduced a new document E. The opposition division maintained the patent in amended form and some of the opponents lodged an appeal against this decision.
For applications filed in the US before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for a patent, but the inventor was considered the applicant. Therefore in this case the two priority applications had been filed in the name of the inventors, i.e. the applicants were the inventors. In cases where the inventors were employees of a company, it was common practice, that the inventors assigned their invention to their employer. With such an assignment the employer formally became the successor in title of the invention. In this case the opponents tried to introduce a document that was published after the priority date as novelty destroying for the invention, by arguing that the applicant of the later European patent application for formal resons had never become the successor in title of the invention.
Effective September 16, 2012, the US Patent Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.
as far as they are relevant to the question if the claim to the priority is relevant
The opposing parties based their arguments on the generally acknowledged legal interpretation that a first filing created two distinguishable rights, namely,
The right of priority can be transferred independently of the right to the grant of a patent.
The opposing parties further argued that Article 87 EPC required a separate and express assignment of the right of priority executed by the applicants of the provisional US applications (P1) and (P2) and the applicant of the European patent on the date of filing of the international application. It was recognised that Evidence to the effect that the applicant of the European patent had acquired the right to the grant of a patent derived from the provisional applications (P1) and (P2) was therefore not sufficient to prove that it had also acquired the rights of priority derived from the first filings. According to decision T 62/05, a transfer of a right of priority had to be proven in a formal way, that is, by way of an assignment declaration in writing signed on behalf of the parties to the transaction. The respondent had failed to provide evidence for such an assignment which met the required standard of proof. The contractual arrangements submitted by the respondent (documents (65b), (65c), and (65d)) only showed that obligations of the individual inventors and employees towards the employer existed. There was, however, no evidence that the inventors and employees had fulfilled their obligations to transfer their rights of priority derived from the US provisional applications (P1) and (P2) to the applicant of the European patent. Moreover, it was not clear from the contractual arrangements which of the affiliates of the corporate group of the applicant of the European patent was to be seen as the transferee.
As a consequence of the lack of validity of the two priority applications, the date of filing of the international application was the effective date for determination of the relevant state of the art. Therefore document E, which was published after the priority date of the earliest priority document P1, but before the application date of the international application, had to be regarded as constituting state of the art within the meaning of Article 54(3) EPC and was thus novelty destroying of the international application.
In addition, appellant opponent 5 argued that the applicant of the European patent had not registered with the US Patent and Trademark Office as assignee of the US provisional applications (P1) and (P2). This was corroborating evidence that the respondent had not acquired the rights of priority derived from these applications.
As to the applicable law, the appellants concurred with decision T 62/05 which applied Article 72 EPC. It had been the aim of the legislator when drafting the EPC not to burden the EPO with questions of substantive national law. Moreover, the interpretation of contractual arrangements was at issue and not deficiencies as to formal requirements under national law. This had also been the case in cases T 1008/96 and T 62/05. The EPO was competent to assess the content of contracts.
as far as they are relevant to the question if the claim to the priority is relevant
In relation to the question of entitlement to priority, the applicant of the European patent argued that, no matter whether Israeli or US law applied to the validity of the transfer, it had provided clear and convincing evidence, namely, in the form of documents (65b) to (65d), (66a), (66f), (66g), (67a), (67b), and (77), which showed that it was entitled, as an employer and successor in right to the three applicants of the US provisional applications (P1) and (P2), to the right of priority deriving from said applications. With respect to Israeli law, it was established that the right of priority derived from the US provisional applications (P1) and (P2) had been acquired by operation of section 132 of the Israeli Patents Law 5727-1967, or by factual circumstances implying such a transfer, namely, through the fulfilment of contractual obligations, in the absence of a formal requirement for the transfer of the right of priority. There was no evidence on file that disproved the findings of the expert opinions that the respondent had provided. It was also clear from the decision of the German Federal Supreme Court filed as document (79) that Article 87 EPC did not require a formal and separate assignment as provided by Article 72 EPC for European patent applications. A transfer by conduct from the transferor to the transferee implying such a transfer under the circumstances was sufficient.
With respect to the question of choice of national law, the respondent argued that it had provided evidence for succession in title under both Israeli and US national law. In any case, it would be unreasonable and unpredictable to ask an applicant to comply with the law of each and every signatory state for which an application claiming priority of a first application was filed. It would be a reasonable solution to apply, in analogy to Article 60(1) EPC, the law of the country of employment in case of an employment relationship. In the alternative, also the application of the law of the state of the filing of the first application could be justified.
The proprietor's evidence supported both choices.
Pursuant to Article 87(1) EPC 1973, a right of priority, that is, the right to claim priority for a European patent application from the filing date of an eligible "first application" (or "previous application" in Article 88 EPC), originates in the applicant of said 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. Where the first application has been filed jointly by two or more applicants, the right of priority belongs to them jointly (T 788/05, point 2 of the reasons).
However, pursuant to Article 87(1) EPC 1973, 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 (T 62/05, point 3.6 of the reasons; see also T 5/05, point 4.2 of the reasons; T 788/05, point 2 of the reasons; T 382/07, point 9.1; T 1933/12, points 2.3 and 2.4 of the reasons; Grabinski, in: Benkard (Ed.), EPÜ, 2nd edition 2012, Art. 87 No. 3; Bremi, in: Singer/Stauder (Ed.), Europäisches Patentübereinkommen, 6th edition 2013, Art. 87 No. 53).
It is generally accepted that the right of priority is transferable independently of the corresponding first application which can remain with the original applicant. Furthermore, the right of priority may be transferred to a third person for one or more countries only (T 62/05, point 3.6 of the reasons; see also Grabinski, in: Benkard (Ed.), EPÜ, 2nd edition 2012, Art. 87 No. 3; Bremi, in: Singer/Stauder (Ed.), Europäisches Patentübereinkommen, 6th edition 2013, Art. 87 No. 53). It is thus an independent right up and until it is invoked for one or more later applications to which it becomes an accessory. The right of priority has thus 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.
The board did not share the opponents' view that the characterisation of the right of priority as a right independent of the right to the priority application implies that the valid transfer of a priority right inevitably requires a separate and express assignment declaration. The requirements for a valid transfer of rights of priority is a matter distinct from the characterisation as an independent legal right. Article 87 EPC 1973 is silent on the requirements for a valid transfer of rights of priority. It neither requires an express assignment in writing nor excludes a transfer by operation of law or by conduct of the parties concerned implying such transfer. This issue will be addressed in more detail below.
The reference to the "successor in title" in Article 87(1) EPC 1973 is also interpreted as requiring a transfer of the right of priority before the filing of the subsequent application (implicit in T 493/06, point 11 of the reasons; Grabinski, in: Benkard (Ed.), EPÜ, 2nd edition 2012, Art. 87 No. 4; Bremi, in: Singer/Stauder (Ed.), Europäisches Patentübereinkommen, 6th edition 2013, Art. 87 No. 53 and 54; Ruhl, Unionspriorität, 2000, p. 100 No. 262; Teschemacher, Anmeldetag und Priorität im europäischen Patentrecht, GRUR 1983, 695, p. 699; see at national level: document (79), point 11 of the reasons; Patents Court, decision of 12 June 2009, Edwards Lifesciences AG v Cook Biotech Incorporated [2009] EWHC 1304 (Pat), point 95 of the reasons; Patents Court, decision of 23 June 2010, KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors [2010] EWHC 1487 (Pat), point 54 of the reasons; see also Wieczorek, Die Unionspriorität im Patentrecht, 1975, p. 142). The board is aware of diverging opinions (see Moufang, in: Schulte (Ed.), Patentgesetz mit Europäischem Patentübereinkommen, 9th edition 2014, §41 No. 28; German Federal Patent Court, decision of 28 October 2010, 11 W(pat) 14/09, BlPMZ 2011, 255, point B.2)a)cc) of the reasons). This divergence is, however, not relevant for the outcome of the present decision (see below point 3.7).
If entitlement to priority is challenged, a successor in title, who desires to take advantage of the priority of a first application and who asserts that priority is rightly claimed from the first application, has to prove its entitlement to that right, which includes a valid transfer of the right of priority (T 1008/96, point 3.3 of the reasons; T 493/06, point 8 of the reasons). In the present case, the burden of proof is therefore on the applicant of the European patent to establish that
Before assessing the evidence on file, the board of appeal determined the relevant law that governs the requirements for a valid transfer of the right of priority for the filing of a European patent application under Article 87(1) EPC 1973. The board assessed that neither Articles 87 EPC 1973 and 88 EPC, nor Rules 52 and 53 EPC set out any such requirement.
The board however did not follow the Decision T 62/05 (points 3.8 and 3.9 of the reasons) which considered that the transfer of right of priority had to be proven in a formal way and that it was therefore appropriate to apply an equally high standard of proof as required by Article 72 EPC 1973.
The board stated that the standard of proof defines the degree of persuasion that is required in order to convince the deciding body of the existence of an alleged fact. The standard applied by the boards of appeal is "balance of probabilities" which amounts, in practice, to proof on preponderant balance of evidence. The seriousness of the consequences of alleged facts should not make any difference to the standard of proof to be applied in determining these facts. Article 72 EPC 1973 does not concern the issue of standard of proof, but sets out formal requirements for a valid assignment of a European patent application and thereby limits the means of giving or obtaining evidence for the determination of such a transfer. Relying on Article 72 EPC 1973 would thus establish an exclusionary rule of evidence, in that it excludes all evidence which is not in the form as required by Rule 20 EPC 1973. Having regard to Article 117 EPC and the principle of free evaluation of evidence, such an exclusionary rule of evidence should not be extended beyond its scope of application.
The board further stated that Article 72 EPC 1973 constitutes harmonised law with respect to the formal requirements for a transfer of a validly filed European patent application and overrules as lex specialis national law which, in general, governs legal acts related to property interests in such applications (Article 74 EPC 1973). No reason was apparent for the board for applying Article 72 EPC 1973 by analogy in the context of a transfer of right of priority preceding a subsequent filing:
In the boards view, as regards its material scope, Article 72 EPC 1973 is concerned with the transfer of a European patent application and the associated rights, foremost the right to the grant of a patent to which the applicant is assumed to be entitled (Article 60(3) EPC 1973). The right of priority derived from a first application only becomes an accessory to subsequent applications for which it was rightfully invoked. Until then, the right of priority is a distinguishable right that is transferable independently of the corresponding first application. Thus, applying Article 72 EPC 1973 to the transfer of a right of priority in view of a subsequent European patent application would, in the case of a European first filing, ignore the fact that the priority right is a right independent of the right to the first application and, in the case of a non-European first filing, that Article 72 EPC 1973 does not govern the relationship between the applicant of a European patent application and a different applicant of a distinct first application. Indeed, the provisions concerning a transfer of rights, namely Article 72 EPC 1973 in conjunction with Rule 20 EPC 1973, and the related provisions (Articles 60(3) EPC 1973 and 61 EPC) serve another purpose. They define the conditions under which the EPO may take into account questions of substantive law and procedural acts by a person other than the registered applicant (J 2/01, OJ EPO 2005, 88, point 3 of the reasons).
Neither the systematic context (Articles 61 EPC, and 60(3), 72, and 74 EPC 1973), nor the preparatory work to Article 72 EPC 1973, which is silent with respect to the question of transfer of the right of priority, leave room for applying Article 72 EPC 1973 in a way which goes beyond its clear wording. The board therefore concurred with the decision of 16 April 2013 of the German Federal Supreme Court (filed as document (79), point 13 of the reasons) that Article 87 EPC does not require a formal and separate assignment as provided by Article 72 EPC.
The board further considered the question whether the silence of the EPC with respect to the requirements for a valid transfer of a right of priority implies that there are no formal requirements for such a transfer under the EPC. It would thus be possible to establish a transfer of a right of priority using any kind of evidence within the meaning of Article 117 EPC. It would be sufficient to demonstrate such a transfer by way of conduct of parties to a contract implying the transfer in the circumstances of the case. However, this would exclude the possibility of a transfer by operation of law which can only be established by reference to a (comprehensive) legal system. Also, the board's assessment of the evidence adduced will inevitably need to be made by reference to defined formal and material requirements. As an example, the question whether it is sufficient to have a declaration by the transferor only or whether an employee may transfer all its future rights in an invention to an employer cannot be resolved under the EPC. It has to be born in mind that the EPC does not establish a fully harmonised patent system, although a high degree of harmonisation between the EPC and national laws has indeed been achieved. Neither the interpretation of the EPC nor the application of Article 125 EPC, which refers to procedural law only, constitute a proper basis for further harmonisation to the extent that the EPC does not clearly provide for harmonised law itself. For these reasons, the board did not take silence as a conscious choice of the legislator that the transfer of a right of priority is free of requirements as to form and content.
Since the provisions of the EPC do not lend themselves to an autonomous determination of the requirements for the transfer of right of priority, the validity of such transfer is a matter of national law. The board concurs in this respect with decision T 1008/96, point 3.3 of the reasons. The board also notes that other decisions have relied on national law when assessing the validity of a transfer of the right of priority (see T 160/13, point 1.1 of the reasons; J 19/87, point 2 of the reasons; implicit in T 493/06, points 9 to 11 of the reasons).
With respect to the opponents argument that it had been the intention of the legislator not to burden the EPO with questions of substantive national law the board remarked that while it is true that it was held with respect to the purpose of Article 60(1) and (3) EPC 1973 that the EPO should not be concerned with questions of entitlement in terms of substantive law and should have no power to determine disputes as to whether or not a particular applicant is legally entitled to apply for and be granted a European patent in respect of the subject-matter of a particular application (J 2/01, OJ EPO 2005, 88, point 2.6 of the reasons, citing G 3/92, OJ EPO 1994, 607, point 3 of the reasons), this reasoning cannot be extended beyond the context of Article 60(1) and (3) EPC 1973. The EPC does not, as a matter of principle, bar the organs of the EPO from applying substantive national law governing an incidental question which is decisive for the outcome of the proceedings before the EPO (see for example G 3/99, OJ EPO 2002, 347, point 9 of the reasons; G 1/13, points 2.3.3, 5.1, 6 to 8 of the reasons). In the board's judgment, the assessment of whether the applicant of a European patent application is "successor in title" within the meaning of Article 87(1) EPC 1973 of the right of priority deriving from an earlier application is the exclusive concern of national law.
The above cases did, however, not address the issue of the choice of the applicable national law. Indeed, the determination of the applicable national law seems to have been straightforward in view of the circumstances of the respective cases:
The board of appeal stated that in none of the above decisions was the law of the state for which protection was sought by the subsequent filing considered to be relevant. Indeed, in the case of a subsequent European patent application this would require harmonised law. The above decisions, however, provide no guidance as to whether, in the assessment of the validity of a transfer of the right of priority, the law applicable to the legal relationship between the transferor and the transferee of the right of priority, such as corporate agreement, employment contract, or universal succession, should apply, or the law of the state of filing of the first application. Whereas this point of law was not at issue in the cases referred to above, it is relevant to the present decision: The applicants of the US provisional applications (P1) and (P2) were employees of the respondent working in Israel. Thus, whereas the first filings point to US law, the employment relationship is connected to Israel.
Articles 87 EPC 1973 and 88 EPC and Rules 52 to 53 EPC are silent on the choice of law to be made with respect to the assessment of the validity of a transfer of rights of priority. Nevertheless, in the absence of harmonised law, the board must determine the applicable national law, since this is essential for reaching a decision as to whether said transfer has been properly established and proven by the party bearing the burden of proof in this respect.
In the board's judgment, the following considerations militate in favour of the law applicable to the legal relationship between the transferor and the transferee of the right of priority, and against the law of the state of filing of the first application:
For the above reasons, the board concluded that, in the present case, the law of the state of the employment relationship between the three original applicants and the respondent determines the transfer of the right of priority. At the time of filing of the international application, the original applicants were employees of the respondent (see point 3.7.1 below). Both the state where the original applicants were employed and the place of business of the respondent, to which the original applicants were attached, are Israel. Therefore, Israeli law applies.
Turning to the evidence before it, the board had to evaluate whether it provided proof that
Documents (65b), (65c), and (65d) provide conclusive evidence that the three inventors and applicants of the US provisional applications (P1) and (P2), Ms L., Mr B. and Ms A., were employees of the applicant of the European patent. These documents also show that the employment relationship existed at the time when the invention can be presumed to have been made, namely, before the filing of the US provisional applications (P1) and (P2).
The invention giving rise to the US provisional applications (P1) and (P2), as well as to the international application, qualifies as a service invention under Chapter 8 of the Israeli Patents Law 5727-1967, which is applicable in the present case (reference is made herein to the English translations filed as documents (66f) and (66g)). The first expert opinion of Mr. TB of 21 May 2012 (document (66a), point 7 of the opinion) provides proof for this factual and legal aspect. Mr TB confirmed his assessment in a second opinion dated 1 June 2014 (Exhibit 2 to document (77), point 7 of the opinion). The board sees no reason to doubt the conclusion reached in these opinions.
The respondent argued that it had acquired the right of priority derived from the US provisional applications (P1) and (P2) by operation of section 132 of the Israeli Patents Law 5727-1967. In support of its contention, the respondent relied on the opinions of its expert, Mr TB (documents (66a) and (77), Exhibit 2).
Section 132 of the Patents Law 5727-1967 reads as follows:
In both, his first and second opinion, Mr TB provided the following opinion on the legal effects of section 132 of the Israeli Patents Law 5727-1967 (documents (66a) and (77), Exhibit 2, points 8 to 10):
8. Once an invention is deemed to be a service invention, and in the absence of any agreement to the contrary between the employer and the employee, Section 132 of the Patents Law provides that the invention shall become the property of the employer. Israeli law does not require any written instrument of assignment in such circumstances to transfer the ownership rights in the service invention from the employee (or employees) to the employer. The full ownership of a service invention inherently vests in the employer by virtue of the law, once the invention is arrived at by the employee.
9. The employer's ownership of a service invention would inherently entail, under Israeli law, the right to file a patent application on the invention. The employer's ownership of a service invention further entails the right to claim priority from an application filed on the invention abroad (i.e. in any country which is "a Member State", as defined in Section 1 of the Patents Law), by the employees, for and on behalf of the employer. Accordingly, it is my opinion that, under Israeli law, the right to claim priority from such an application inherently vests in the employer, without any need for a written instrument of assignment of the specific right of priority from the employees to the employer.
10. I was advised by Teva, and accordingly it is my factual assumption for the purpose of this expert opinion in connection with the ending passage of Section 132(a) above, that Teva never renounced the invention. It is also my understanding, and accordingly my factual assumption for the purpose of this expert opinion, that none of the three inventors in the present case gave Teva a notification that would render Section 132(b) applicable."
The board had no reason to doubt the above conclusions by the respondent's expert. It is true that an opinion by an expert who has represented a party "in numerous proceedings" (see documents (66a) last sentence of the second paragraph, and document (77), Exhibit 2, last sentence of the second paragraph) may, upon free evaluation of the evidence, carry less weight than a court decision, another independent authority under the national law, or an expert commissioned by the board under Article 117(1)(e) EPC together with Rule 117, first sentence, EPC. Nevertheless, an opinion of a party's expert is a means of evidence under Article 117(1) EPC. In the present case, the opponents did not file any contrary evidence. Of course, both the legal and evidentiary burden of proof rested on the respondent to establish its right to claim priority from the US provisional applications (P1) and (P2). The opponents could therefore limit themselves to casting doubt on the credibility of the evidence adduced by the respondent. However, in doing so, they ran risk that, in the absence of further evidence disproving the conclusions in the respondent's expert opinions, the board could decide in favour of the respondent, if the appellants' challenge to the evidence before the board did not give rise to substantiated doubts as to the veracity of these expert opinions.
The board could not make out any flaws in the opinions of Mr TB.
The finding that, under Israeli law, the full ownership of a service invention belongs to the employer, by virtue of the law and without any need for a written instrument of assignment, is confirmed by the wording of section 132 of the Patents Law 5727-1967. Since the invention that gave rise to the US provisional applications (P1) and (P2) qualified as a service invention within the meaning of section 132 of the Patents Law 5727-1967 (see point 3.7.3 above), the right to the invention passed to the respondent under said provision. Moreover, the factual assumptions in the opinions that the respondent had not relinquished the invention giving rise to the US provisional applications (P1) and (P2), and that the invention had not remained with one of the inventors under section 132(b) of the Patents Law 5727-1967, have never been contested by the opponents.
The second step in the chain of argument, namely, that the employer's ownership of a service invention further entails the right to claim priority from an application filed by the employees for and on behalf of the employer, was also not reasonably put into doubt. It is true that the right of priority is not mentioned in section 132 of the Patents Law 5727-1967. However, it follows from section 140 of the Patents Law 5727-1967 that the aim of section 132 is to vest the employer with the rights to obtain worldwide protection for service inventions made by his employees. The appellants did not invoke any other provision or legal authority which would support the view that the right of priority was excluded from the operation of section 132 of the Patents Law 5727-1967 and which would have put into question the expert's conclusion that the employer's ownership of a service invention further entails the right to claim priority from an application filed on the invention abroad.
The appellants argued that section 140 of the Patents Law 5727-1967 merely created an obligation of the employee to act in the interest of the employer and therefore required with respect to the transfer of the right of priority an express written assignment executed by the employee. The board does not agree.
Section 140 of the Patents Law 5727-1967 reads as follows:
"If a person made a service invention and if the ownership of it passed, in whole or in part, to his employer under section 132 or by agreement, then he must do everything required of him by the employer in order to obtain protection for the invention to the employer's benefit in any place whatsoever, and he must sign any document required therefor; if he does not do so, then the Registrar may permit the employer to do so after he has given the employee an opportunity to state his arguments."
It follows from the wording of this provision that the employee's obligation to sign a document is only stated with respect to a corresponding requirement in the law of the state of the filing of a patent application. It cannot be read into section 140 of the Patents Law 5727-1967 that a valid transfer of the right of priority requires a declaration of assignment executed by the inventor. Apart from the fact that section 140 does not make any reference to the right to priority, such an interpretation would create an additional hurdle for the employer in obtaining patent protection for service inventions and thus run counter to the aim of this provision. Since the Patents Law 5727-1967 does not provide elsewhere for formal requirements for the transfer of the right of priority, the transfer of the right of priority arising from a first filing by an employee-inventor does not, under Israeli law, require any written document signed by the employee in accordance with section 140 either. It is therefore reasonable to conclude from sections 132 and 140, with respect to a service invention, that the right of priority arising from a first filing by an employee-inventor - albeit being a right separate of the right to the invention - will devolve to the employer as a necessary correlate of the employer's entitlement to seek worldwide protection for the invention.
For the above reasons, the board was satisfied that the respondent had discharged its burden of proof and provided convincing evidence for the fact that the right of priority derived from the US provisional applications (P1) and (P2) had been transferred to the respondent before the date of filing of the international application.
The board was not persuaded by the appellants' counter-arguments:
The appellants brought forward the argument that, with respect to a transfer of the right of priority, a distinction had to be made between the obligation to assign the rights and the separate act of assignment. They maintained that the contractual arrangements in documents (65b), (65c) and (65d) merely created obligations. Such obligations could not be regarded as proof for a subsequent valid transfer of rights. With respect to the right of priority, the fulfilment of the contractual obligations of the inventors and original applicants therefore required a separate assignment. According to the appellants, the respondent had failed to provide proof for such assignment.
The board admitted that it is true with respect to Rule 20 EPC 1973, that a distinction is made in the jurisprudence of the boards of appeal between an obligation to assign a right and the assignment itself (J 4/10, point 5.4 of the reasons; J 12/00, points 2 and 14 of the reasons). This jurisprudence pertains, however, to Article 72 EPC 1973, which is not applicable in the present case. Such a distinction has no bearing on the transfer of a right of priority if, according to the applicable national law, the right is transferred by operation of law (e.g. merger or succession), or if an assignment does not require specific formalities and thus can be implied from the circumstances. This is, for example, the case under German and Swiss national law (T 160/13, point 1.1 of the reasons; document (79), points 12 and 14 of the reasons; Bremi, epi Information 1/2010, page 18, left-hand column, second complete paragraph).
In the present case, the applicable Israeli law on service inventions does not require particular formal requirements to be fulfilled; in particular, it does not require a separate and express assignment. Even if, for the sake of argument, section 132 of the Patents Law 5727-1967 regarding service inventions were to be disregarded, a transfer of the right of priority can nevertheless, in the absence of formal requirements under Israeli law, be agreed orally between the employee and the employer, or even be manifested by way of circumstances implying such transfer. Thus, even when considering the contractual arrangements (documents (65b), (65c) and (65d)), in particular the agreement that no proprietary or other right to a service invention remained with the employees, and the obligations under section 140 of the Patents Law 5727-1967 only, the circumstances were such that the filing of the international application WO 2006/024024 claiming priority from the US provisional applications (P1) and (P2) in the name of the respondent (except for the United States of America and Barbados) would, in the board's judgement, imply a mutual agreement between the inventors and the respondent on the transfer of the right of priority to the latter.
Appellant opponent 5 argued that the respondent had not registered as assignee of the US provisional applications (P1) and (P2). In the opinion of appellant opponent 5 this created doubt as to the respondent's entitlement to claim priority from these applications. However, since the fate of a first application does not prejudice the right of priority claimed for a subsequent application and because the right of priority can be transferred independently of the right to the first application, the question of entitlement to the US provisional applications (P1) and (P2) is not relevant. Even though registration of the respondent as assignee of the US provisional applications (P1) and (P2) might have provided corroborating evidence for an implied transfer of the right of priority, such evidence was not required in the present case.
Consequently, the board held that the international application enjoys the earliest priority date of 23 August 2004 and therefore document E did not constitute prior art, as it was published after the priority date of the priority application. Unfortunate for the applicant, other prior art was found to prove lack of inventive step and eventually the patent was revoked.
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