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Law & practice

Official Journal March 2022

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Citation: OJ EPO 2022, A27
Online publication date: 31.3.2022

Notice from the European Patent Office dated 4 March 2022 concerning the staying of proceedings due to referrals G 1/22 and G 2/22

1. Referrals G 1/22 and G 2/22 ("Entitlement to priority") are pending before the Enlarged Board of Appeal. The referring board seeks to clarify if the EPC confers jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1) EPC (question 1). In case this is answered in the affirmative, the board further asks whether a party B can validly rely on the priority right claimed in a PCT application if the PCT application designates party A as applicant for the US only and party B as applicant for other designated states, and the PCT application claims priority from an earlier application designating party A as the applicant, and the priority claimed in the PCT application is in compliance with Article 4 of the Paris Convention (question 2). The questions referred to the Enlarged Board of Appeal can be found in decisions T 1513/17 and T 2719/19 (consolidated proceedings).

2. The President of the EPO has decided that, in view of the potential impact of the referral, all examination and opposition proceedings before the EPO in which the decision depends entirely on the outcome of the referrals will be stayed ex officio. The stay will be lifted as soon as possible after the Enlarged Board of Appeal has issued its decision.

3. This concerns examination and opposition proceedings where the entitlement to claim priority as successor in title under Article 87(1) EPC is relevant for the division's decision and there is no evidence (beyond a possible PCT request) that the priority right was transferred from the applicant of the priority application to the applicant of the application in question before the filing date of the latter.

4. If proceedings are stayed, the examining or opposition division concerned will inform the parties accordingly (see Guidelines for Examination at the EPO, E-VII, 3). At the same time, it will withdraw any communications setting them time limits to react, and will despatch no further such communications until the Enlarged Board of Appeal has given its decision, whereupon a communication will be issued concerning the resumption of the proceedings.

5. The present notice is applicable with immediate effect.