EPO express
The validity of a claim of priority has an impact whether a document or any other kind of publication, including prior use of an invention, may destroy the novelty or the inventiveness of a patent application. The pivotal point of this decision was if a patent assignment agreement assigning the priority right of a national application entered into three days after the lapse of the priority year can have a retroactive effect.
In the original decision of the board of appeal the patentee of the revoked patent is called the appellant, as it filed the appeal against the revocation of the patent. The party who opposed the patent is called in the original decision the respondent, as it responded to the appeal. In order to make the decision easier to understand this summary uses the term “applicant” for the applicant who filed the patent. After the patent was granted the term “patentee” is used, despite the fact that it’s patent was eventually revoked. Similarly, the appellant is called herein the “opposing party” as it opposed the patent of the patentee.
The original decision comprises 109 pages. This discussion of the decision therefore concentrates on the main arguments for the validity and omits the detailed discussion of novelty and inventive step.
In T 0577/11 the case of the applicant filed an international application under the PCT in the name of TC AG as applicant for all designated states except the United States of America and of five natural persons as applicants for the United States of America on 6 September 2003.For the US the applicants were the inventors, as was required by US law at the time of its filing.
The applicant claimed priority from an Italian application No. IT RM2002… of 6 September 2002, filed in the name of TC BV. The declaration of priority was submitted upon filing of the international application by indication of the priority data in the dedicated section of PCT request form. No declaration as to the applicants' entitlement, at the international filing date, to claim the priority of the earlier application was submitted upon or after the filing of the subsequent application.
The PCT application matured into a European patent application and was granted after Examination on 12 December 2017.
On the last day of the opposition period a third party filed an opposition against the granted European patent. The opposing party submitted new documents in view of which it alleged the invention to lack novelty and inventive step. The opposition relied inter alia on document D1 which was filed as a European Patent application on 3 December 2002 and was published on 12 June 2003. The publication date of D1 was therefore in-between the priority date of the priority application and the filing date of the European patent application in suit. In the event that the priority claim was valid, D1 could not be used for a lack of inventive step attack. However according to Article 54(3) EPC, independent of the validity of the priority, it could be used to attack the novelty of the European patent in suit.
To pre-empt the outcome of the appeal, D1 was indeed successfully used in a lack of inventive step attack. Therefore it is essential to understand why the claimed priority was considered invalid by the board of appeal.
The opposition also claimed that the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Article 100(b) EPC in combination with Article 83 EPC).
The latter ground for revoking a patent is very often raised, but most of the time dismissed. However, as an opposing party is barred from introducing new grounds of appeal at a later stage, it is good practice to raise this ground in the original opposition request.
The parties were summonsed to oral proceedings. Whilst several letters were exchanged in preparation of the oral proceedings the opposing party raised in a letter dated 2 December 2010 for the first time the issue that the claim of priority may be invalid as the European patent was filed in the name of TC AG, domiciled in Liechtenstein and the priority application was filed in the name of TC BV, a company domiciled in the Netherlands.
According to a statement of the person who was instructed to file the European application, this person received prior to the end of the priority period instructions from the responsible person for IP in TC BV to file a PCT patent application claiming priority of the Italian patent application RM2002… in the name of TC AG, with the information that the latter Company was the new owner.
This statement was intended to prove that the assignment of the priority right was orally agreed before the European patent application was filed. This declaration was not admitted to the oral proceedings as it was considered to have been filed to late. At best it would have proven that the person responsible of IP in TC AG, who was the same person who was responsible for IP in TC BV, believed that TC AG was the successor of TC BV. However, evidence that TC AG had become the legal successor of TC BV does not seem ever to have been offered in the entire proceedings.
Apparently, there were doubts about the valid claim of the priority. The Patentee submitted during the oral proceedings a patent assignment agreement between TC·BV, a corporation organised and existing under the laws of the Netherlands (assignor), and TC AG, a corporation organised and existing under the laws of the Principality of Liechtenstein (assignee), concerning inter alia the assignment of the rights of the Italian priority application. According to section 1 of this agreement concerning the rights to the invention and the priority right, was entered into as of 9 September 2003, i.e. 3 days after the filing date of the European patent application, which is 3 days after the lapse of the priority period. Section 4 of said assignment agreement reads: "This Agreement has a retroactive effect to commence as from January 1, 2003. As from the effective date the ASSIGNEE is considered the sole and exclusive owner of the Patents."
The opposition division was of the opinion that priority had been validly claimed, since the assignment agreement proved that the transfer of rights, including priority rights, took place with effect from 1 January 2003, which was before the filing date of the later European application. Document D1, which was comprised in the state of the art according to Article 54(3) EPC did not show all features of the patent in suit and therefore was considered not to be novelty destroying for the patent in suit. The opposition division however revoked the patent as the subject-matter of the amended claims did not involve an inventive step with respect to document D2.
The patentee of the revoked patent filed an appeal and submitted a main request and several auxiliary request. In its statement of grounds of appeal, the patentee however did not address the validity of the claimed priority.
In its reply, the opposing party contested the validity of the claimed priority.
In a (first) communication accompanying the summons to attend (first) oral proceedings dated 12 May 2015, the board expressed its provisional opinion that, although the patent assignment agreement including its retroactive effect might be a valid agreement under national law, this could not overcome the fact that it had been concluded after the filing date of the European patent application, and so the priority was not validly claimed.
Several legal experts submitted various legal opinions on the interpretation of the patent assignment agreement under Dutch and Italian law and under the EPC. These opinions are incorporated in the arguments stated below.During those oral proceedings the board came inter alia to the conclusions that the subject-matter of claim 1 of the main request and of the first auxiliary request did not involve an inventive step with respect to document D2 and that the subject-matter of claim 1 of the second auxiliary request involved an inventive step with respect to document D2 and, if the claimed priority were not valid, would not involve an inventive step with respect to document D1.
The oral proceedings ended with informing the parties that the proceedings would be continued in writing.
By letter dated 14 March 2016, the appellant submitted that the priority right had been transferred prior to the filing of the subsequent application under Italian law on the basis of the enclosed evidence (D23 to D26), presented further additional arguments and filed a second legal opinion of Messrs Boscariol and Martucci (D27) and a second legal opinion of Mr Van Engelen (D28).
The arguments of the appellant, in writing and during the oral proceedings, may be summarised as follows: Arguments of the parties for Applicable Law
The laws of Liechtenstein were not relevant.
The transfer of the priority application and the priority right which occurred on 9 September 2003, i.e. three days after filing of the subsequent application, was sufficient for the priority right to be validly claimed. This date was prior to the 16-month period available under the revised EPC for filing the declaration of priority. There was no requirement derivable from Article 87(1) EPC 1973 that the subsequent applicant had to be the successor in title when the subsequent application was filed. The 12-month period was relevant only for the filing of a subsequent application. There was no requirement that the subsequent applicant had to prove his entitlement to claim priority. A broad approach followed from the legal changes under EPC 2000 and was beneficial for the applicants of the priority and subsequent applications. Third parties were not adversely affected.
As section 4 of the patent assignement agreement provided for a retroactive effect, the priority application and the right to claim its priority had been transferred from TC BV to TC AG as from 1 January 2003.
With respect to Italian law, all the rights mentioned in Patent assignement agreement were validly transferred with effect as from 1 January 2003 because on the basis of the principle of freedom of contract enshrined in Article 1322 of the Italian Civil Code it was permissible to provide for a retroactivity clause. In support, reference was made to legal opinion.
With respect to Dutch law, section 4 was to be interpreted in the sense that the parties agreed to transfer with retroactive effect the "economische eigendom" (economic ownership), but not the legal ownership. This was sufficient, however, as shown by decision J 19/87, the travaux préparatoires of the Washington Conference of 1911 for revising the Paris Convention and decisions T 205/14 and T 517/14.
Under Italian law, no particular form was required for a contractual assignment of a patent application or a priority right and such a contract could be entered into "by carrying out convincing behaviours", i.e. via a mutual agreement "manifested by conclusive action". The ownership of the priority application and the priority right was legally acquired by TC AG under Italian law when it carried out a "convincing behaviour" showing that the application and the priority right belonged to it. In view of the fact that TC BV and TC AG were companies of the same corporate group T SA, the filing of the subsequent application in the name of TC AG constituted convincing behaviour showing that TC AG was the rightful owner of the priority application and the priority right derived from it. Thus, TC AG acquired ownership of the priority application and the priority right arising from it upon filing the subsequent application. Reference was made in this context to Italian case law on trade marks, in particular the theory of the group trade mark and free circulation inside a corporate group. Patent assignement agreement was concluded after the filing of the subsequent application only in order to produce written evidence of the previous assignment ("ad probationem").
Prior to the filing of the subsequent application, a transfer of the priority right had been orally agreed upon between TC BV and TC AG. The appellant's representative had received instructions from TC BV for the filing of the subsequent application in the name of TC AG. The priority right did not need to be mentioned as it was an accessory right to the application, which was automatically transferred with the application under Italian law.
The arguments of the opposing party with respect to the validity of the priority assingment, in writing and during the oral proceedings, was summarised by the board as follows:
The appellant did not take a clear position as to which law it considered to be applicable. "Law shopping" should not be admitted.
The transfer of ownership as of 9 September 2003 based on section 1 of Patent assignement agreement, line (i) When the subsequent application was filed, TC AG was not yet the successor in title of TC BV. As the priority right had not been transferred before expiry of the 12-month priority period, it no longer existed and therefore a subsequent transfer was not possible.
Although not explicitely mentioned by the opposing party this points at the roman principle "Nemo plus iuris ad alium transferre potest quam ipse habet" which means "one cannot transfer to another more rights than they have".
The 16-month period for filing the declaration of priority or later points in time were not relevant. What was relevant was the filing of the subsequent application, even in situations where it was filed prior to expiry of the 12-month period.
Transfer of ownership with retroactive effect as from 1 January 2003 based on section 4 of Patent assignement agreement, line (ii)
The acquisition of the "economische eigendom" on the basis of Patent assignement agreement was not sufficient to meet the requirement of "successor in title" within the meaning of Article 87(1) EPC 1973. Acquisition of the legal title was necessary. Decision J 19/87 could not be relied upon because property law in the UK was different and not applicable to the present case.
Transfer agreement "by carrying out convincing behaviour" within a corporate group, namely the filing of the subsequent application, line (iii)
Such a transfer upon filing was not proven. Patent assignement agreement did not refer to a transfer which had already taken place. The language rather suggested that a transfer of rights was agreed upon for the first time at the date of conclusion of Patent assignement agreement, thus on 9 September 2003.
Transfer of ownership by way of an oral agreement prior to the filing of the subsequent application, line (iv), and admission of the written declaration of the appellant's representative
The appellant's submissions relating to a prior oral transfer made during the first oral proceedings should not be admitted because they were late. The filed evidence was not complete since the person giving the instructions was not identified. Moreover, the declaration of the appellant's representative constituted no proof that there had been a transfer by oral agreement or even a transfer of the priority right at all. The priority right was an independent right and thus to be distinguished from the priority application. It was not clear in relation to what subject-matter Tenaris Connections AG was "the new owner". Patent assignment agreement too provided no proof, as it did not make any reference to a transfer which had occurred earlier.
Transfer by an agreement "manifested by conclusive action" prior to the filing of the subsequent application, line (v), and admission of documents D23 to D29 into the proceedings
The appeal was admitted. With respect to the priority issue the board concluded:
The sole issue contested with respect to the validity of the claimed priority was whether, as argued by the appellant, TC AG was entitled to claim priority from the earlier Italian application filed on behalf of TC BV. TC AG was one of the several applicants for the international application and was indicated inter alia for the designation of EP.
In its communication of 12 May 2015, the board, applying the general principle that a party claiming a right must be able to show that it is entitled to that right and referring to decisions T 1008/96, Reasons, point 3.3, T 1056/01, Reasons, point 2.10, and J 19/87, expressed its view that, in the present circumstances where the validity of the claimed priority was at stake, it was the appellant-patentee who had to demonstrate that the priority was validly claimed.
Both the appellant and the respondent referred to the provisions of the EPC as the basis for assessing whether the subsequent application validly claimed priority from the earlier application filed by TC BV, and in particular for the question whether TC AG, one of the applicants for the subsequent application and the only applicant for all designated EPC contracting states, could be considered the successor in title as regards the priority application or the right to claim priority from it. The board agreed that the EPC provisions are applicable for the assessment of this question.
The validity of a claimed priority is relevant for defining the effective date of a claimed invention and for determining the relevant state of the art. As the validity of the claimed priority thus has a direct effect on the patentability of the claimed invention, the provisions of the EPC, in particular Article 87(1) EPC 1973 (and not Article 8 PCT or Article 4 Paris Convention), may be applied pursuant to Article 27(5) PCT for the question at issue in the present case, namely whether the applicant was entitled to claim priority from the earlier application.
In the present case, the board did not need to decide which law is applicable for assessing the validity of the transfer of the priority application or the priority right or whether, or under what conditions, the priority application and the priority right are transferable under the relevant law. None of the appellant's lines of argument, which were based on the applicability of Italian and Dutch law, have led to a finding that the requirements of Article 87(1) EPC 1973 were fulfilled. No other national laws were invoked by the parties. Therefore in the present case the board did not have to determine the applicable law.
In view of the board's decisions not to admit lines of argument (iv) and (v) and the respective declaration and documents (see points 2.2 and 2.3 above), the lines of argument to be considered as to their merits were a transfer based on Patent assignement agreement (lines (i) and (ii)) and a transfer by an agreement "by carrying out convincing behaviour within a corporate group", namely by filing the subsequent application on 6 September 2003 (line (iii)).
Even though it appears that, logically, lines (i),(ii) and (iii) are mutually exclusive, the board has assessed each line independently and, in doing so, has accepted a change in the appellant's argument as regards the nature of the patent assignment agreement, i.e. whether it was constitutive of the transfer or of a declaratory nature only.
Transfer of ownership on 9 September 2003 based on section 1 of the patent assignment agreement (line (i)) It was not contested between the parties that, on the basis of the patent assignment agreement, TC AG was the "successor in title" of TC BV for the Italian priority application and the right to claim priority from it as of 9 September 2003. This date, however, is three days after the filing date of the international application.
The appellant argued that, for a priority claim to be valid, Article 87(1) EPC 1973 required only that there was a valid first application, and that the subsequent application was filed within 12 months after the first filing in respect of the same invention, which subsequent application could be filed by the applicant's successor in title. No time restriction could be derived from the provision concerning the time by when the succession in title had to have taken place.
The board, however, notes that a time constraint as to the question of succession in title is imposed by Article 87(1) EPC 1973.
Article 87(1) EPC 1973 reads: "Any person who has duly filed in or for any State party to the Paris Convention for the Protection of Industrial Property, an application for a patent ..., or his successors in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application."
The provision uses the wording "has ... filed" and "shall enjoy, for the purpose of filing a European patent application" (see also the German version "eingereicht hat"/"genießt für die Anmeldung ... zum europäischen Patent" and the French version "a ... déposé"/"jouit, pour effectuer le depôt d'une demande de brevet européen"). The provision therefore relates to a period of time lying between the acts of filing the priority application and filing the subsequent application. The term "successor in title" refers in the context of the provision to the person who has duly filed the priority application but not yet the subsequent application ("[a]ny person who has duly filed ..., or his successor[...] in title"). Hence, for a right of priority to be enjoyed from a first application, the subsequent application must be filed by the applicant of the priority application or his successor in title. The latter alternative presupposes that the succession in title has already taken place when the subsequent application is filed. Thus, whilst the circumstances of a succession in title, whether originating from a contract or occurring by operation of law, remain undefined, the requirement that the succession in title must have occurred when the subsequent application is filed is clearly derivable from the wording of Article 87(1) EPC 1973.
The appellant's interpretation that Article 87(1) EPC 1973 does not impose such a requirement and thus is not concerned with the point in time of a succession in title can, in the board's view, not be reconciled with the wording of the provision.
As stated by the Enlarged Board of Appeal, "Articles 87 to 89 EPC provide a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application. The Paris Convention also contains rules of law concerning priority. The Paris Convention is not formally binding upon the EPO. However, since the EPC - according to its Preamble - constitutes a special agreement within the meaning of Article 19 of the Paris Convention, the EPC is clearly intended not to contravene the basic principles concerning priority laid down in the Paris Convention" (cf. G 3/93, OJ EPO 1995, 18, Opinion, point 4).
The board considers that its interpretation of Article 87(1) EPC 1973 is in line with Article 4 Paris Convention and the legislative history of these provisions.
Article 87(1) EPC 1973 was modelled on Article 4A(1) and Article 4C Paris Convention (see also Document IV/6514/61, report on the meeting of 6 October 1961 of the Patents Working Party; Report on the First Preliminary Draft Convention, 1970, Part IV, point 7; Document MR/27 of 18 April 1973, Comments by WIPO, point II.1). Hence, it is no surprise that Article 4A(1) Paris Convention uses similar wording ("who has duly filed"/"for the purpose of filing") and thus also refers to the scenario in which a first application has been filed but not yet the subsequent application. From the legislative history of the Paris Convention it can be derived that the right of priority was already incorporated in the original text of the Paris Convention of 1883 (see Bodenhausen, Guide to the Paris Convention, BIRPI 1969, page 35). The creation of the right of priority was aimed at protecting the rights of the applicant of a first application for an invention in all countries of the Paris Union by securing the filing date as the effective date for the definition of the state of the art. This was to enable the applicant to decide, within a certain period, in which other countries protection should be sought in respect of the same invention and to prepare for such subsequent filings which, in the absence of a centralised filing system, were still required at that time. In the event of such subsequent filings, other applications or disclosures occurring in the priority period were to have no negative effect as regards the patentability of the invention (see Article 4B Paris Convention). At the Washington Revision Conference in 1911, the wording "successor in title" was added to Article 4A(1) Paris Convention (Actes de la Conférence de Washington de 1911, UIPPI, Berne 1911, "Actes de Washington", pages 44, 247, 275 and 307), but the historical documentation does not indicate a specific point in time as to when the succession in title must have taken place, nor does it give much information about the purpose of the amendment (see, however, the points addressed by the appellant mentioned in point 6.5.2(b) below). It is, however, reported that, while the "successor in title" was not mentioned in Article 4A Paris Convention, courts in some countries allowed successors in title to claim priority, whereas others did not. The addition of the term "successor in title" to the Paris Convention clarified the situation in order to meet an urgent need in practice (see Wieczorek, Die Unionspriorität im Patentrecht, 1975, page 129). It must be borne in mind that applications in foreign countries involve additional costs which the applicant cannot always afford and which might prevent him from further exploiting his invention abroad. The amendment of 1911 confirmed that the applicant's successor in title could also enjoy the priority right, and that therefore it was not necessary for the applicant of the priority application to make the subsequent filings himself in order for them to benefit from the priority of the earlier application. The board sees no indication in the travaux préparatoires that this amendment was intended to change or substantially broaden the concept of priority as designed by the Paris Convention and having existed at that time for almost thirty years. The legislative development of the provision suggests that the underlying intention was to extend the options of the applicant of the first filing by allowing him, in addition to the existing alternative of filing the subsequent application himself, to transfer his rights to another person who would then enjoy the priority right as the applicant's successor in title. However, because the applicant wishing to make his own subsequent filing must do so within the priority period, a transfer of ownership is also subject to the same time constraints, such that the successor in title may file the subsequent application within the same period. 6.5.4 Relevant case law Likewise, in the case law of the boards of appeal and the jurisprudence of national courts of the EPC contracting states hitherto, the point in time at which the subsequent application was filed has been considered relevant in assessing whether the applicant of the subsequent application is entitled to the claimed priority pursuant to Article 87(1) EPC 1973 as a successor in title (see decisions T 62/05, Reasons, point 3.4; T 788/05, Reasons, point 2; T 493/06, Reasons, point 11; T 382/07, Reasons, point 9.1; German Imperial Patent Office, BlPMZ 1906, 127; German Federal Court of Justice, decision of 16 April 2013, X ZR 49/12 ? Fahrzeugscheibe, Reasons, point II.2.a); High Court of Justice of England and Wales, Edwards Lifesciences AG v Cook Biotech Incorporated, [2009] EWHC 1304 (Pat), para 95 with reference to decisions J 19/87 and T 62/05; KCI Licensing Inc. et al. v Smith & Nephew PLC et al., [2010] EWHC 1487 (Pat), para 58; HTC Corporation v Gemalto S.A., [2013] EWHC 1876 (Pat), para 132; Idenix Pharmaceuticals Inc. v Gilead Sciences Inc. et al., [2014] EWHC 3916 (Pat), para 409; Higher Regional Court Düsseldorf, decision of 6 December 2012, I-2 U 46/12, Reasons, point II.B.3(b)(aa) 1.2.1). In the present case, the subsequent application was filed on 6 September 2003 and, at the same time, the declaration of priority was submitted in accordance with Article 8(1) PCT and Rule 4.10(a) PCT (as in force until 31 March 2007). According to appellant's line of argument (i), Tenaris Connections AG was the successor in title as of 9 September 2003, i.e. three days later. Hence, Tenaris Connections AG was not entitled to the claimed priority pursuant to Article 87(1) EPC 1973 according to any of the established approaches in the case law. 6.5.6 Proof of entitlement to the priority right The appellant, in support of its view that Article 87(1) EPC 1973 did not set a time constraint in respect of the succession in title, referred to the circumstance that an applicant who claims the priority of an earlier application is not always obliged to provide proof of his entitlement to the priority right if he did not file the priority application. The absence of the need to file such proof as a matter of course corresponded to the absence of the need to be a successor in title upon filing the subsequent application. On this point the board notes that the absence of a need to file proof of entitlement cannot automatically lead to the conclusion that, as suggested by the appellant, the applicant need not be entitled to the right at a particular point in time. Rather, the absence of a requirement in the EPC for the applicant to submit proof of his entitlement to the claimed priority as a matter of course corresponds to the absence of an obligation for the EPO to assess the validity of the claimed priority in every case in which priority is claimed. The board stated that as a result, applicants who are not applicants of the priority application and claim priority from it have to submit proof of entitlement only if the EPO invites them to do so. The requirement that the applicant of the subsequent application must be entitled to claim priority when filing his application is a separate issue. 6.5.7 Considerations as to the inventor's position As further support for the argument that no time restriction for the succession in title concerning the priority application or the priority right arising from it is imposed by the EPC, the appellant referred to the discussions in the travaux préparatoires of the Diplomatic Conference in 1973 concerning the inventor's position (see document M/PR/G, report of the Main Committee I, point C.3.; document M/48/I, Memorandum B). The appellant argued that, as regards the transfer of the inventor's rights, it was not intended for legal certainty for third parties to be established during the examination procedure, and that the legislator's decision not to require proof of transfer of the inventor's rights emphasised that those rights, including the priority right, should be transferred in as free and unimpeded a manner as possible. The board considers that the absence of a requirement for the applicant to file proof of his entitlement to the invention again corresponds to the absence of a requirement that this fact is to be verified by the EPO as a matter of course. No further-reaching conclusions may be drawn. Moreover, the board recalls that the issue at stake in the present case is not the inventor's right to the European patent, governed by Article 60 EPC 1973 and Article 61 EPC, but the right of the applicant of a European (or Euro-PCT) application to claim priority from an earlier application pursuant to Article 87(1) EPC 1973. The right of priority arises for the person who filed the first application ("any person who has duly filed..."), irrespective of his entitlement to the invention. For this reason, too, it is hardly convincing to make the leap from the absence of a requirement for the applicant to file proof of his entitlement to the invention to a free and unimpeded transferability of the right of priority. 6.5.8 Filing of the declaration of priority, Article 88 and Rule 52(2) EPC The appellant further argued that, because Article 88 and Rule 52(2) EPC allowed the declaration of priority to be filed after the filing of the subsequent application, until expiry of 16 months from the earliest priority claimed, the priority right must have been available, and therefore also transferable, at least until expiry of this time limit. Since the applicant of a priority application who filed a subsequent application within the priority period did not have to decide whether to claim priority when filing the subsequent application, there was no reason why he should be required to own the priority right at that date. Therefore, the transfer of ownership from Tenaris Connections BV to Tenaris Connections AG on 9 September 2003 occurred in due time. The board notes that the provisions of Article 88 and Rule 52 EPC are not applicable in the present case. The application that led to the patent in suit was an international application. Pursuant to Rule 4.10(a) PCT (as in force until 31 March 2007) the declaration of priority was, as a rule, to be made on filing the subsequent application (similarly under Article 88(1) and Rule 38(1), (2) EPC 1973). Moreover, the filing of the declaration of priority, i.e. the indication of the date on which and the state in or for which the previous application was made and the file number, is a purely formal requirement that the applicant of the subsequent application has to fulfil if he wants to invoke the priority right for prosecution of the subsequent application. It ensures that the patent office which receives the subsequent application is duly informed of the fact that priority is claimed because of its importance for the prosecution of the application, in particular for search and examination. The particulars in the declaration of priority are published with the application (see Article 4D(2) Paris Convention, Rule 38(6) EPC 1973, Rule 52(5) EPC), for the purpose of informing the public of the claimed priority, without however providing any guarantee as to the validity of the claimed priority (see also point 6.4.6). The Paris Convention of 1883 did not contain any rules on when and how the right of priority may be claimed (see Bodenhausen, supra, page 47), and the rule introduced at the Washington Revision Conference in 1911 leaves it to the choice of the national legislators to determine the latest date on which such a declaration must be made, without providing for harmonisation (cf. Article 4D(1) Paris Convention); and this demonstrates the formal nature of the declaration of priority, in addition to the fact that Article 4D(4) Paris Convention itself names it a "formality". The EPC legislator likewise considered the filing of the declaration of priority to be of procedural relevance only (see e.g. document BR/135/71 of 17 November 1971, point 112). The question of the point in time by which the declaration of priority can or must be filed is, therefore, to be distinguished from the question of the point in time at which the subsequent applicant who is not the applicant of the priority application must be entitled to claim priority, the latter a question that also involves issues of substantive law. Answering the first question does not permit conclusions to be drawn therefrom as regards entitlement to the right. 6.5.9 Need for a broad interpretation and no adverse effect for third partiesFrom the patentee's point of view it was understandable that it argued that the applicant of a priority application should be allowed more flexibility to make use of his priority right to the greatest extent possible. In the view of the patentee this means that he should thus be able to assign his right to an applicant of a subsequent application that has already been filed. At the same time, an applicant of a subsequent application who was not the applicant of the priority application should be given the possibility to become entitled to the priority right after filing his application.
In the patentee's view, a more liberal approach was also needed because transactions between companies could be complex and might take time, in particular because of difficulties of communication between the companies.
Nor would a broad approach have a detrimental effect on the legitimate expectations of third parties. Before the application was published, third parties had no knowledge of its existence. Provided that the priority claim appeared in the published application, allowing a succession in title after filing of the subsequent application could not adversely affect third parties' expectations. Since there was no requirement for proof of transfer of the right of priority to be filed as a matter of course, third parties had to take into consideration that, where a claimed priority appeared in the published application, this priority, if assessed, would indeed turn out to be valid.
The board, however, could not consider it possible to change the conclusions it has reached on the basis of the clear wording of and the travaux préparatoires for the relevant legal provisions. The board pointed out the risk that an interpretation as proposed by the appellant would mean that it should be permissible for the applicant of a subsequent application who had not filed the priority application to make use of a right of priority owned by another person, and arrange for acquisition of that right only at a point in time when this becomes necessary, possibly up to the time when the patent is granted.
In view of the above considerations, the board considered the transfer of ownership of the Italian priority application and the right to claim priority from it from TC BV to TC AG as of 9 September 2003 (line of argument (i)), which occurred after the filing date of the subsequent application, as too late. On the basis of this transfer TC AG could not enjoy, for the purpose of filing the subsequent application, the right of priority in accordance with Article 87(1) EPC 1973.
6.6 Transfer of ownership with retroactive effect as of 1 January 2003 based on section 4 of the patent assignment agreement (line (ii))
The appellant submitted that the rights mentioned in the patent assignment agreement were validly transferred with effect from 1 January 2003 because on the basis of the principle of freedom of contract enshrined in Article 1322 of the Italian Civil Code it was permissible to provide for a retroactivity clause. In support, reference was made to legal opinion D21. The validity of the retroactive transfer was contested by the respondent. Legal opinion D21, signed by two attorneys at law, deals on pages 2 to 5 with the "transfer of an IP right according to Italian law". The focus of this section lies on the argument that Tenaris Connections AG acquired legal ownership when it "carried out convincing behaviour", namely by filing the subsequent application (see point XIX above, Validity of the priority, line (iii)). In relation to a retroactive transfer it is merely stated that the "parties may also determine that property over the goods sold will be transferred only at a specified later date or at a prior date, i.e. retroactively, like it was the case of the contract for the transfer of the patent application and the priority right from Tenaris Connections BV and Tenaris Connections AG". As the basis for this statement, reference was made to Article 1322 of the Italian Civil Code, which reads (translation by the appellant): "The parties may freely determine the content of the contract within the limits imposed by the law and by the corporate rules. The parties may as well conclude contracts which do not appertain to those types which have a particular discipline, provided that they are directed to realise interests which merit protection following the legal order." Except for this, the legal opinion does not contain any further reasoning in support of a transfer with retroactive effect. The national court decisions cited in legal opinion D21 relate to different issues (see also point 6.6). In these circumstances, the legal consequences of section 4 of Patent assignement agreement under Italian law, in particular the extent to which a retroactive effect would be recognised, have not been established by the appellant to the satisfaction of the board. Accordingly, the board was unable to conclude that, when the subsequent application was filed, Tenaris Connections AG was the successor in title on the basis of section 4 of Patent assignement agreement when applying Italian law.
With regard to Dutch law, it is uncontested that what was transferred with retroactive effect was not the legal title but the economic ownership ("economische eigendom"). The appellant also confirmed at the second oral proceedings (cf. minutes, page 7, last paragraph, to page 9, first paragraph) that, when the parties to the contract entered into it, they agreed that solely the economic ownership was to be transferred to Tenaris Connections AG with retroactive effect, but not also the legal title. Whereas Tenaris Connections AG was entitled, retroactively as from 1 January 2003, to all benefits and revenues from the transferred rights and bore the costs and risks in relation to the transferred subject-matter, Tenaris Connections BV remained the legal owner and retained the legal title until 9 September 2003, the date on which Patent assignement agreement was concluded (see also legal opinion D20, points 2.2 to 2.5). Therefore, on the basis of the retroactive effect, when the subsequent application was filed Tenaris Connections BV was the sole owner of the legal title and Tenaris Connections AG had economic ownership. According to the appellant, the economic ownership that Tenaris Connections AG had acquired could be qualified as a licence (cf. minutes of the second oral proceedings, page 7, third paragraph).
For the present purposes there was no further need for the board to clarify whether section 4 of Patent assignement agreement, due to its reference to "Patents" and the definition in section 1, related only to the priority application or whether it also comprised the right to claim priority from that application. The board accepted that the retroactive effect should indeed apply to both.
In order to show that the transfer of "economische eigendom" on the basis of section 4 of Patent assignement agreement was to be considered a "succession in title" under Dutch law the appellant referred to the Nebula decision of the Dutch Hoge Raad (decision of 3 November 2006, NJ 2007, 155; cf. legal opinion D20, point 2). The board accepts that "economische eigendom" exists as a legal concept under Dutch law. However, it is not derivable from the decision relied upon, nor has it been shown by the appellant to the satisfaction of the board, that the transfer of "economische eigendom" on the basis of a contractual agreement is to be considered, under Dutch law, as a "succession in title" for the purpose of claiming priority from an earlier patent application, i.e. as having the consequence that the successor in title would be considered, under Dutch law, to be entitled to claim priority from an earlier application. For the relevant point in time, namely the filing of the subsequent application, the arrangement amounted in the board's view to a limited transfer of rights, as opposed to a transfer of overall rights of ownership. This was not sufficient for Tenaris Connections AG to become a successor in title within the meaning of Article 87(1) EPC 1973. The appellant's further arguments in this context did not lead to a different finding by the board. (a) Decision J 19/87 The appellant relied in its submissions on decision J 19/87, in which a transfer of the "equitable interest" under English law was found to be sufficient. However, the situation underlying J 19/87 is to be distinguished from the present one. Therefore, a different finding would not contradict this previous decision. In J 19/87, the inventor Mr B had assigned to a company his rights in the invention and in the UK patent application that he had filed, together with the right to file further applications and the right to claim priority from the UK application. Agreeing that the first assignment was void, the company assigned the rights back to the inventor by an agreement under seal. The inventor then filed a European patent application claiming priority from the earlier UK application. However, the second agreement had not been signed by the inventor, with the effect that, under the relevant provisions of the UK Patents Act then in force, which required the signature of both parties for the assignment of a patent application, he became the owner of the invention, but not the owner of the UK patent application. As regards the application, he became "entitled in equity" and was entered as such on the Register of Patents in the UK. In these circumstances, the deciding board held that when the European application was filed, the inventor "was entitled to the right to apply for and be granted a European patent in respect of the invention the subject of the UK application, having regard to Article 60 EPC, first sentence. Furthermore, ... under Article 87(1) EPC on [the date on which the European application was filed] Mr B[...] enjoyed, for the purpose of filing the European patent application ..., a right of priority" (cf. J 19/87, Reasons, point 2). The board notes that this conclusion was drawn from a situation in which the relevant assignment agreement, by which ownership was to be transferred, was concluded prior to the filing of the subsequent application and was defective solely for formal reasons. The formal defects in the assignment could have been remedied by the contracting parties at any moment after its conclusion, and this remedy was legally possible under English law. In the present case, the parties contractually agreed that the assignment agreement, which was concluded after the filing date of the subsequent application, should have retroactive effect in relation to the transfer of economic ownership only. It was not intended that the legal title too should be transferred as from the earlier date, nor could it have been acquired. Moreover, as follows from J 19/87, Reasons, point 2, and page 5 of the legal opinion given in that case (cf. enclosure of legal opinion D28), the "equitable assignment" was registrable on the UK patent register and registration had indeed taken place. As to the present case, according to the appellant's explanation, registration of economic ownership in the patent register was not provided for under Dutch patent law. Economic ownership could be defined as a licence, and licences were clearly registrable. However, no registration in the Dutch patent register had been effected for Patent assignement agreement. With regard to the appellant's argument that "economische eigendom" was the same as ownership "in equity" as in decision J 19/87 and that, for this reason, a similar approach should be taken, the board agrees with the respondent that these concepts are to be distinguished from one another. The "title in equity" under English law, with which J 19/87 was concerned, arose in a particular situation and can, in the board's view, not be taken out of its context but should be confined to the facts of that case. (c) Decisions T 205/14 and T 517/14 In support of its argument that obtaining "economic ownership" under Dutch law on the basis of section 4 of Patent assignement agreement should be accepted as "succession in title", the appellant also relied on the statement in decisions T 205/14 and T 517/14 that assessing whether the applicant is a "successor in title" within the meaning of Article 87(1) EPC 1973 "is the exclusive concern of national law" (cf. T 205/14, Reasons, point 3.6.3, and T 517/14, Reasons, point 2.7.3). The board notes that this statement was made to refute the argument that the EPC legislator did not intend to burden the EPO with questions of national law and that therefore the issue should be solved on the basis of Article 60(1) and (3) EPC 1973. This board agrees with the statement in these two decisions but fails to see a conflict with the above-mentioned passages relating to the "exclusive concern of national law" cited by the appellant, given that, in the present case, the board could not establish on the basis of the appellant's submissions that Tenaris Connections AG was, when the subsequent application was filed, the "successor in title" under any of the national laws relied on by the appellant. The board notes, however, that the reference to "national law" might, depending on how the relevant law that governs the requirements for a "succession in title" under Article 87(1) EPC 1973 is to be determined, need further interpretation. This question did not arise in the present case since it concerned an Italian priority application that was transferred by a Dutch company on the basis of a contract that, according to the agreement itself, should be governed by the laws of the Netherlands, and, as set out above, the appellant based its arguments only on Italian and Dutch law. (d) Should economic ownership of Tenaris Connections AG acquired under section 4 of Patent assignement agreement suffice? The appellant argued that, for tax purposes, economic ownership generally sufficed to have the economic owner treated as the proprietor (cf. legal opinion D21, page 3). However, in the board's view, this is not sufficient for it to be accepted as succession in title in the present context. The board acknowledges that, in the area of tax law, economic considerations may prevail for the allocation of subject-matter to natural or legal persons and that patents, including applications and priority rights, are important economic assets. On the other hand, the board notes that the provisions of the EPC governing the filing and examination of patent applications and the validity of granted patents are more specifically characterised by a formal allocation of the application or patent to a person (or jointly to a group of persons), on the basis of the act of filing. A multiplicity of rights and roles is generally avoided (cf. Article 60(3) EPC 1973, Article 61 EPC, Article 118, first sentence, EPC 1973). Moreover, the priority right under Article 4A Paris Convention and Article 87(1) EPC 1973 originates in the person of the applicant, irrespective of entitlement to the invention. In the present situation, legal ownership and economic ownership became separated due to the retroactive effect contractually agreed upon between Tenaris Connections BV and Tenaris Connections AG after the filing date of the subsequent application. Tenaris Connections AG was to be the owner of (only) the "economische eigendom" of the priority application or the priority right derived from it as of a date preceding the filing of the subsequent application. This is a limited transfer of ownership, and for that reason Tenaris Connections AG is, in the board's view, not to be considered a "successor in title" within the meaning of Article 87(1) EPC 1973. As of the original date, legal ownership remained vested in Tenaris Connections BV, the applicant of the priority application. The board also sees no reason why the economic ownership obtained by Tenaris Connections AG, which according to the appellant's submissions could be defined as a contractual licence, should be a basis for claiming priority or prevail over legal ownership retained by Tenaris Connections BV. In this context, the board also notes that no evidence was filed by the appellant demonstrating that acquisition of "economische eigendom" under Dutch law (or economic ownership in general) has been accepted by a national court as "succession in title" in the context of claiming priority or in the area of patent law in general. 6.6.3 Because Tenaris Connections AG did not, together with the economic ownership, acquire the legal title with retroactive effect, it is not necessary to decide on the further question of whether the retroactive effect of the contractual agreement valid under national law would have to be acknowledged under Article 87(1) EPC 1973 or on the relevance of the findings of the Enlarged Board of Appeal in decision G 1/13 (OJ EPO 2015, A42) in this respect. 6.6.4 Hence, in light of the above, the board concludes that Tenaris Connections AG was not the successor in title within the meaning of Article 87(1) EPC 1973 on the basis of section 4 of Patent assignement agreement (line of argument (ii)) when the subsequent application was filed. 6.7 Transfer agreement "by carrying out convincing behaviour within a corporate group", namely by filing the subsequent application (line iii) The respondent questioned the applicability of Italian law, on which the appellant had based this line of argument. However, this question does not need to be answered in the present circumstances. The board accepts that, as argued by the appellant, patent applications and priority rights may be transferred under Italian law "by carrying out convincing behaviour" or "by conclusive action", which was understood by the board to mean in the present case that a transfer allegedly occurred on 6 September 2003 by means of an agreement implied by conduct, namely by the filing of the subsequent application on behalf of Tenaris Connections AG, claiming priority from the earlier application filed by Tenaris Connections BV, a company within the same corporate group. However, in the board's view, such a transfer has not been proven. In this context, the board has taken the approach that Article 72 EPC 1973 provides no basis for imposing formal requirements for a transfer of the Italian priority application or the priority right derived from it and has assessed the evidence provided on the basis of the principle of free evaluation of evidence (see also decisions T 205/14, Reasons, point 3.6.1, and T 517/14, Reasons, point 2.7.1). Tenaris Connections BV and Tenaris Connections AG are separate legal persons belonging to the same corporate group. Legal acts such as the filing of patent applications or oppositions are to be attributed to the legal person that performed them, and not to the corporate group (see also T 5/05, Reasons, point 4.3; G 2/04, supra, Reasons, point 2.2.1). The priority application and the right to claim priority from it were therefore to be attributed to Tenaris Connections BV, subject to a later transfer. The appellant argued that the fact that the subsequent application was filed in the name of Tenaris Connections AG, claiming priority from the earlier application filed in the name of Tenaris Connections BV, implied that an agreement as to the transfer of ownership of the priority application or the priority right arising from it was manifested between the two companies by virtue of the filing of the subsequent application. In the board's view, however, the sole act of filing a subsequent application of one company of a corporate group which claims priority from an earlier application of another company of the same corporate group does not clearly imply that there was a mutual agreement between the companies concerning a transfer of ownership of the priority application or the priority right arising from it. In support of its argument for a "transfer by convincing behaviour", the appellant referred to decisions of Italian courts relating to trade marks. The board notes that no Italian case law concerning a transfer of a patent application or the right to claim priority from it was cited. Moreover, in the extract from the decision presented by the appellant concerning the "theory of the group trade mark" and the "free circulation inside the group" it is stated that "there is no need to use the scheme of the contract of licence ... in the presence of productive or commercial contracts, which comprise ... enterprises which operate ... according to unitary decisions of industrial policy" (see appellant's letter of 3 July 2015, page 6, third paragraph). The board notes that in the present case no "productive or commercial contract" or comparable evidence is on file. The further court decisions cited by the appellant (see legal opinion D21, page 5, second and third paragraphs) mention the existence of declarations as to which party is the owner. The appellant referred in this context to Patent assignement agreement, arguing that it was produced by the parties as written evidence of the previously concluded assignment ("ad probationem"). The respondent pointed out that Patent assignement agreement did not mention any contract as having already been concluded and that it contradicted the allegation that a transfer had already occurred upon filing of the subsequent application. In the board's view, in the light of the text of Patent assignement agreement ("hereby assigns and transfers") and in the absence of any reference or hint in respect of an earlier transfer, an ordinary reader of Patent assignement agreement would not assume that a transfer of the rights mentioned in Patent assignement agreement had already occurred prior to its conclusion. There is no indication of the purpose of the clause in Patent assignement agreement providing for retroactive effect, and hence it is not clear whether it aims at formalising an earlier agreement made in non-written form or at actually producing earlier effects. A contract concluded with a retroactive clause is no proof that rights have already been transferred before the date of its conclusion.Finally, the reference to the "Fahrzeugscheibe" decision of the German Federal Court of Justice (BGH, X ZR 49/12 of 16 April 2013) does not support the appellant's argument either. In that case, the Federal Court of Justice accepted that there had been a transfer of the priority right between companies of the same group implied by conduct under German law prior to the filing of the subsequent application. However, the situation as regards the evidence on file was quite different: in particular, there was proof that there was a contract on co-operation in research and development which had been concluded between the companies of the corporate group prior to the filing of the applications and which addressed the issue of industrial property rights. Furthermore, there was evidence of a communication from the company which had filed the priority application to the holding company, addressing the question of an extension of patent protection to other countries, which in the light of the existing contract was interpreted by the court as an offer of a transfer, as well as evidence of a copy of the internal files of the holding company predating the filing of the subsequent application, which was interpreted as the acceptance of the offer that did not have to be expressly declared in view of a waiver contained in the existing contract. No comparable evidence which could have been evaluated by the board was submitted by the appellant in the context of the line of argument relating to a transfer upon filing of the subsequent application (line (iii)), and the evidence submitted by the appellant in the context of the line concerning a transfer by an agreement "manifested by conclusive action" prior to the subsequent filing (line (v)) was not admitted into the appeal proceedings inter alia because it was considered not to be highly relevant (see point 2.3 above).
Thus, in view of the above the board comes to the conclusion that an agreement for a transfer of the priority application or the priority right arising from it from Tenaris Connections BV to Tenaris Connections AG implied by conduct, as manifested by the act of filing the subsequent application, has not been sufficiently proven.
6.8 For these reasons, the board cannot concur with any of the appellant's lines of argument (i) to (iii) submitted in support of the validity of its priority claim and to be assessed as to their merits. Therefore, the priority claimed in the patent in suit is not valid.Hence the subject-matter of claim 1 of the first auxiliary request is obvious to the person skilled in the art and therefore does not involve an inventive step within the meaning of Article 56 EPC 1973.
Since the board considered the priority claimed for the patent as not valid , document D1, which was published on 12 June 2003, i.e. before the date of filing of the European patent application which matured into the patent in suit, forms part of the state of the art pursuant to Article 54(2) EPC 1973.
The board therfore considered subject-matter of claim 1 of the second auxiliary request new vis-à-vis document D1.
However, the board found that the subject-matter of claim 1 of the second auxiliary request differs from the subject matter disclosed in document D1 in such a small detail that in the board's judgment, the person skilled in the art would select this feature on the basis of the teaching of the common general technical knowledge, and would thus arrive at the invention. For the board it therefore followed that the subject-matter of claim 1 of the second auxiliary request did not involve an inventive step within the meaning of Article 56 EPC 1973.
Turning to claim 1 of the third auxiliary request the board found that it differs from claim 1 of the second auxiliary request in a detail that is known from document D1. The board concluded that the subject-matter of claim 1 of the third auxiliary request did not involve an inventive step within the meaning of Article 56 EPC 1973 for the same reasons as those set out for the second auxiliary request.
In view of the above the board decided that none of the appellant's main request and first to third auxiliary requests is allowable.
Therefore, the appeal must be dismissed.
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