T844/18 – the CRISPR case – interpretation of priority under Art. 87(1) EPC
For a valid claim to priority under the EPC, the later application has to be filed by the same applicant or the same applicants (meaning all of the applicants, omitting none) who filed the earlier application. Thus, for a first filing by multiple applicants but a subsequent application by only one or some of those applicants it has to be shown that the priority right held jointly by the multiple earlier applicants had been transferred to the sole applicant or the group of applicants.
Overview of decision
All those with an interest in the technology referred to generically as CRISPR will be aware of a plethora of patents and patent applications covering all manner of its fundamental aspects and variations thereof and may also be aware of the many related opposition and appeal proceedings at the EPO concerning CRISPR patents.
In October 2020 the Nobel Prize in Chemistry was awarded to Emmanuelle Charpentier and Jennifer Doudna “for the development of a method for genome editing”, noting these two “discovered one of gene technology’s sharpest tools: the CRISPR/Cas9 genetic scissors”.
In fact, while many CRISPR patents have already been variously upheld or revoked or maintained in amended form at opposition level, there have been (to my knowledge) no final decisions by EPO Technical Boards of Appeal (TBA) concerning technical elements of CRISPR technology. There has been, however, a final TBA decision concerning legal elements of the law of priority under the EPC arising from one CRISPR patent.
This decision, T844/18, addressed whether the EPO has the power to examine priority, how “celui qui” is to be interpreted and which law determines the identity of the person who “duly filed” the earlier application from which priority is claimed (see The Three Questions later in this article).
While the decision was announced orally at the end of the hearing on 16 January 2020 and published in the minutes less than a week later on 23 January 2020 it was not until nearly ten months later, on 6 November 2020, that the TBA formally (and finally) handed down its written decision and confirmed revocation of the Broad Institute Inc’s CRISPR/Cas9 patent EP2771468.
Much analysis was circulated in the period immediately following the oral decision. Herein, the formal, written decision is reported more or less without analysis: the decision speaks for itself.