Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No.
9 ARTICLE 687
The Right to Priority in Article 4A (1) of the
Paris Convention and Article 87 (1) of the
European Patent Convention
Joseph Straus*
Introduction
Article 4 A (1) of the Paris Convention for the
Protection of Industrial Property (PC) and Article 87
(1) of the European Patent Convention (EPC) regulate
the entitlement to the so-called priority right.
Article 4 A (1) PC provides that ‘Any person who
has duly filed an application for a patent, . . ., in one of
the countries of the Union, or his successor in title,
shall enjoy for the purpose of filing in other countries, a
right of priority during the periods hereinafter fixed’.
According to Article 4 C (1), (2) PC that period is 12
months starting from the date of the first application.
However, the exercise of the priority right under the PC
is controlled by a complex set of rules laid down in
Articles 4 A-4H PC.
Article 87 (1) EPC by and large mirrors Articles 4 A
(1) and 4 C (1) of the PC. Thereunder ‘Any person who
has duly filed, in or for (a) any State party to the Paris
Convention for the Protection of Industrial Property or
(b) any Member of the World Trade Organization, an
application for a patent, . . ., or his successor 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’.
Further EPC provisions controlling the priority right
are to be found in Article 87 (2), (3), and in Articles
88–89, which also correspond to the PC provisions. For
instance, Article 88 (1) EPC requires that an applicant
desiring to take advantage of the priority of a previous
application has to file a declaration of priority and any
other document required, in accordance with the
Implementing Regulations. The latter provide, inter
alia, that the declaration must be made within
16 months from the earliest priority date, that the par-
ticulars of the priority declaration shall appear in the
* Email: j.straus@ip.mpg.de.
This contribution is partly based on a legal opinion submitted on behalf
of the Broad Institute, Cambridge, MA, in a proceeding in the European
Patent Office (EPO). Writing legal opinions, as a rule, means searching
for solutions for problems generated by real life, the spring which never
runs dry and continuously generates most complex factual situations,
C The Author(s) 2019. Published by Oxford University Press. All rights reserved.
V doi:10.1093/jiplp/jpz083
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The author
 Joseph Straus is Dr jur., Dres. jur. h.c., Professor
of Law at the Universities of Munich (em.) and
Ljubljana, and Emeritus Director at the Max
Planck Institute for Innovation and Competition,
Munich.
This article
 The priority right is one of the minimum standards
for the international protection of intellectual prop-
erty (IP) rights, which was introduced into the Paris
Convention for the protection of industrial property
as Article 4 already in its original version of 1883.
Since then it has constituted one of the most impor-
tant pillars for the functioning of the IP rights pro-
tection system at an international level.
 Even after more than 135 years of its existence, the
interpretation of certain aspects of the priority
right institute of the Paris Convention and other
international conventions established in compli-
ance with its article 19, such as the European
Patent Convention, has remained contentious.
Among others, the entitlement to the priority right
in case of mismatch between the applicant(s) of
the priority application and those of the subse-
quent application claiming that priority.
 Addressed are the purpose and object of the priority
right in the light of the interpretation rules of the
Vienna Convention as applied in the case law of the
European Patent Office, which is critically reviewed.
A detailed analysis of the complex system of the
European Patent Convention related to the priority
right as well as to the right to the European Patent as
property rights is offered and the paradigm that all
applicants of the priority application (or their succes-
sors in title) must also be the applicants of the appli-
cation claiming that priority is challenged.
not yet decided by highest court instances. Thus, writing legal opinions
and publishing them implies a double responsibility, ie not only to per-
suade the court or the administrative authority, but also to present own
legal positions in public and persuade the peers. The greatest satisfaction
is achieved if both addressees are convinced.
Advance Access Publication 13 July 2019
688 ARTICLE
published European patent application and the
European patent specification (Rule 52 (2) and (5)),
and that an applicant claiming priority shall file a certi-
fied copy of the previous application within the same
period of time (Rule 53 (1)).1 Moreover, Article 89
EPC sets forth that the right of priority shall have the
effect that the date of priority shall count as the filing
date of the European patent application for the pur-
poses of Article 54 (2) and (3), and Article 60 (2), by
and large mirroring Article 4B PC.
The right of priority constitutes one of the main pil-
lars for the functioning of the protection of intellectual
property (IP) rights at an international level. Not sur-
prisingly, it was incorporated into the PC already in its
original text of 1883. At first glance, the entitlement
rules of Article 4 A (1) PC and Article 87 (1) EPC seem
simple; however, as they form part of a more complex
set of rules, they have to be interpreted in their context.
Because the EPC, according to its Preamble, constitutes
a special agreement within the meaning of Article 19 of
the PC, its priority right controlling rules of Articles
87–89, although providing a complete, self-contained
code of rules,2 have to be interpreted in line with the
basic principles concerning the priority right laid down
in the complex provisions of Articles 4 A-H PC.3 How
complex the substance of those rules is, is best demon-
strated by the fact that even more than 135 years after
the adoption of the PC, many core issues have not yet
been clarified by the highest courts of the Paris Union
Member States.
Rules of interpretation
The EPC and the Paris Convention are both conven-
tions, international treaties concluded between states.
Since the decision of the Legal Board of Appeal of the
European Patent Office (EPO) of 8 November 1983,4
first approved and confirmed by the Enlarged Board of
Appeal (EBA) in a decision of 5 December 1984,5 it is
settled case law of the EPO that the principles of the
Vienna Convention on the Law of Treaties of 23 May
1969 (Vienna Convention) apply to the interpretation
1 In line with art 4 D (1), (2), (3) and (5) PC.
2 Legal Board of Appeal of the EPO J 15/80, OJ EPO 1981, 213; Enlarged
Board of Appeal of the EPO (EBA) G 3/93, OJ EPO 1995, 18, point 4 of
the Reasons (at 22).
3 EBA G 3/93, OJ EPO 1995, 18, point 4 of the Reasons (at 22) and G 2/98,
OJ EPO 2001, 413, points 3–5 of the Reasons (at 22); cf also T Bremi in
M Singer and D Stauder (eds), Europäisches Patent Übereinkommen (in
the following Singer and Stauder) (7th edn, Carl Heymanns Publisher
2016) art 87, marginal note 2 with further references.
4 J 08/82, OJ EPO 1984, 155 (at 161–62).
5 G 05/83, OJ EPO 1985, 64–65.
6 In part reproduced in OJ EPO 1984, 192–97.
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 9
of the EPC, despite the fact that the Vienna Convention
entered into force only on 27 January 1980,6 and
according to its Article 4, is applicable only to treaties
which are concluded by states after its entry into force.
The reason for this is that the system of interpretation
of treaties as set forth in Articles 31 and 32 of the
Vienna Convention ‘does no more than codify already
existing public international law’, as had already been
recognized by several national courts, such as the UK
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House of Lords,7 the German Federal Constitutional
Court, and in general by the International Court of
Justice and the European Court of Human Rights.8
The Vienna Convention provides in Article 31 that a
treaty shall be interpreted ‘in accordance with the ordi-
nary meaning to be given to the terms of the treaty in
their context and in light of its object and purpose’.
Article 31 (4) also clarifies that ‘a special meaning shall
be given to a term if it is established that the parties so
intended’. Additionally, Article 32 of the Vienna
Convention provides for reference to preparatory work
if the interpretation according to Article 31 would ei-
ther leave the interpretation ‘ambiguous or obscure’ or
lead to a result which is either ‘manifestly absurd or
unreasonable’.
The very reason for introducing the right of priority
into the PC was to enable inventors, within the initially
limited frame regarding time and funds, to apply for a
patent at the same time in several countries to seek pro-
tection abroad.9 The basic purpose of the priority right
is thus to safeguard, for a limited period, the interests
of a patent applicant in his endeavour to obtain inter-
national protection for his invention, thereby alleviating
the consequences of the principle of territoriality in pat-
ent law.10 Therefore, the international priority provi-
sions contained in the PC have to be construed in a
manner which ensures that the general purpose they
serve, namely to assist the applicant in obtaining inter-
national protection for his invention, is fulfilled as far
as possible. This is also true for the priority system of
the EPC which has to be compatible with the standards
set by the PC in the sense that it should not give less
protection, but which is not generally prevented from
7 The Legal Board of Appeal made specific reference to Lord Diplock in
Fothergill v Monarch Airlines case [1981] A.C. 251 (OJ EPO 1984, 161–
162).
8 EBA G5/83, OJ EPO 1985, 64.
9 See for details St P Ladas, The International Protection of Industrial
Property (Harvard University Press 1930) (in the following Ladas 1930)
265 s; P Ladas, Patents, Trademarks and Related Rights (Harvard
University Press 1975) (in the following Ladas 1975) vol I, § 255 (460 s);
cf also Technical Board of Appeal of the EPO (TBA), T 15/01 of June 17,
2004, point 32 of the Reasons (OJ EPO 2006, 153, 180).
10 T 15/01, point 32 in fine of the Reasons (OJ EPO 2006, 153, 180).
Joseph Straus  Right to Priority in Article 4A (1)
going beyond these standards in favour of the
applicant.11
The term ‘any person’
As a result of a number of revisions of the PC, the
wording of Article 4 A (1), (2) and (3), as well as that of
Article 87 (1) EPC, leaves no doubt that the question
whether an application, the priority of which is claimed
in a European patent application, was ‘duly filed’ and
constituted ‘a regular national filing’, which, no matter
how incomplete, was sufficient to establish the date on
which the application was filed, is to be answered under
the national law of the state where the priority applica-
tion was filed.12 That the priority application was ‘duly
filed’ and constituted ‘a regular filing under the na-
tional law of the State where it was made or under bi-
lateral or multilateral agreements’ is evidenced by the
certified copy of the priority application required under
Rule 53 (1) EPC.
Surprisingly, however, neither the meaning of ‘any
person’, who must have ‘duly filed’ an application for
patent in order to be entitled to enjoy a right of prior-
ity, nor the law to be applied for its interpretation, have
attracted practically any attention either in practice or
in legal doctrine.13 The PC was signed in the French
language, which remained the only official authentic
language of the Convention until its 1967 Stockholm
revision. Article 29 (1) (b) of the Stockholm Act now
sets forth that ‘official texts shall be established by the
Director General [of the World Intellectual Property
Organization] after consultations with the interested
Governments, in the German, Japanese, Portuguese,
Russian and Spanish languages . . .’. However, Article
29 (1) (c) PC still provides that in case of differences of
opinions on the interpretation of the various texts, the
French text shall prevail.14
11 T 15/01, point 34 of the Reasons (OJ EPO 2006, 180–81).
12 cf GHC Bodenhausen, Guide to the Application of the Paris Convention
for the Protection of Industrial Property as Revised in Stockholm in 1967
(United International Bureaux for the Protection of Intellectual Property
(BIRPI)), Geneva 1968, 38–40 (especially art 4A (3) (4), p 40).
13 According to GHC Bodenhausen (n 12) 35, ‘The term “any person” must
be interpreted within the rules of the Convention which define the per-
sons capable of benefitting therefrom.’ Bodenhausen refers in the latter
context to arts 2 and 3 PC. Similarly Ladas (n 9) 268–69, and Ladas (n
9) 463. Based on documents preceding the conclusion of the PC, O Ruhl,
Unionspriorität (Carl Heymanns Publisher 2000), reports that the phrase
‘Celui qui aura regulièrment’, eventually introduced in art 4 PC, pre-
vailed over the proposed alternative ‘l’auteur d’une invention . . . qui
aura’, in order to make the priority right independent from the entitle-
ment to the patent and detached from the notion of an inventor
(Erfinderbegriff), which is differently understood in different Union
countries (74–75).
14 cf for more Bodenhausen (n 12) 218–19.
ARTICLE 689
With the Stockholm Revision Act, a long-lasting lan-
guage discussion among the Paris Union Member
States found an end. It started well ahead of the 1958
Lisbon Revision Conference in which the first step for
establishing official translations, thus not yet official
texts, was made: the amended Article 19 (3) sets forth
that official translations of the Lisbon Act will be pro-
vided in German, English, Spanish, Italian and
Portuguese language. According to the Protocol, the
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Conference expressed the desire that the respective
states should undertake the necessary preparatory work
until the end of 1959.15 The English translation, which
was provided by the International Bureau in 1960, was
an official translation in the sense that it was prepared
in collaboration by the American and British Patent
Offices and has been approved by the English speaking
countries represented at the Lisbon Conference.16
Article 4 A (1) PC which in the original authentic lan-
guage reads ‘celui qui’ was translated with ‘any person’,
a term which since the Stockholm PC Act has been the
official English term of the PC and was incorporated
into the Article 87 (1) EPC in the course of the 2000 re-
vision of the EPC.17
As mandated by Article 31 of the Vienna
Convention, the terms of the Treaty have to be inter-
preted in accordance with the ordinary meaning in
their context and in the light of its object and purpose.
Article 31 (4) of the Vienna Convention also clarifies
that ‘a special meaning shall be given to a term if it is
established that the parties so intended’. Thus, the
terms ‘any’ and ‘celui qui’ in Article 4 (1) PC and
Article 87 (1) EPC have to be given their ‘ordinary
meaning’, absent any indication in the preparatory
documents to the PC or the EPC which would reveal
that the Contracting States did intend to give it a spe-
cial meaning. Also, the EPO case law so far has not
identified any such intention of the legislator.
According to, for example, Webster’s Third New
15 cf H Kühnemann, ‘Die Lissaboner Konferenz, Bericht der deutschen
Delegation’ (1959) GRUR Int 107.
16 cf St P Ladas (n 9) vol I, § 79, p 126.
17 cf Doc MR/2/00e, Basic Proposal art 87 (1) EPC. According to the re-
spective ‘Explanatory remarks’, the 1973 wording of art 87 (1) was
amended to align it with art 2 of the TRIPS Agreement, which requires
that priority rights also be extended to first filings made in any WTO
Member State. Although the ‘Explanatory remarks’ remained silent on
the reasons for the change in the wording from ‘a person’ to ‘any person’,
the reason must have been the same, namely to align the text with art 2
TRIPS, which requires all WTO Members to comply with arts 1 through
12 PC, ie also with art 4A (1), where the priority right is vested in ‘any
person who duly filed’. Thus, the change in the wording from ‘a person’
to ‘any person’ makes the full compliance of art 87 (1) EPC with art 4A
(1) PC even clearer and consequently also underlines that both provi-
sions require the same interpretation.
690 ARTICLE
International Dictionary, ‘any’ means ‘one or some in-
discriminately of whatever kind’.18 The same meaning
holds true for the expression ‘celui qui’ and ‘jedermann’
used in the French and German text of Article 87 EPC.
In the context in which these expressions are used, their
interpretation has to take into account the object and
purpose the priority right was designed to serve, namely
to assist the applicant in obtaining international protec-
tion for his invention. In the case of two or more appli-
cants named, this can only mean to assist each of them
indiscriminately. Ladas has well illustrated this situation
and justified it as follows:
For example A and B apply first in England, and later A, B
and C file an application in Germany. The existence of
identity of applicants in this case, for the purposes of
Article 4, should not be subject to any doubt. A and B
might assign their rights in the invention. If they may
transfer their invention in whole, they may also transfer it
in part. By joining C as an applicant, they manifest their in-
tention to make such a transfer. The opposite should be
possible in principle. If A and B file an application first in
England, and then A alone applies in Germany, he should
be allowed to claim the right of priority. A, the inventor,
may well transfer part of his rights in one country, and ap-
ply jointly for the transferee and retain for himself the
rights in his invention in other countries. Or if B, the co-
owner of the invention in the first country, is unwilling to
claim any right in his invention in other countries, there is
no reason why A should be prevented from doing so.19
Scharen also adopts an interpretation of Article 87 (1)
EPC along the same lines:20
The wording is formulated broadly, which does not indi-
cate any restriction if the person concerned only already
acted as an applicant. In the event of an application by
18 Springfield MA 1986, p 97. Similar definition for the term ‘any’ can be
found in the Cambridge Online English Dictionary (‘one of or each of a
particular type of person or thing when it is not important which’), or in
the Short Oxford English Dictionary 2007, 95 (‘some, no matter which,
of what kind or how many’).
19 Ladas (n 9) 293 ¼ Ladas (n 9) 486–87. It does not seem superfluous to
note that R Wieczorek, Die Unionspriorität im Patentrecht (Carl
Heymanns Publisher 1975) 146, who disagreed with Ladas (ibid fn 185 at
147), and who is repeatedly used as reference in the case law, as well as
in legal doctrine, did so because to his understanding Ladas disregarded
the requirement of inventor’s identity (‘über das Erfordernis der
Erfinderidentität hinweggeht’), ie something which is not required for
claiming priority (see below the text accompanying fn 26). Moreover,
Wieczorek for his straight forward statement ‘Auch wenn die
Erstanmeldung von mehreren Personen gemeinsam hinterlegt wurde, gilt
für die Nachanmeldung das Erfordernis der Identität der Anmelder’
(‘Also if the first application was deposited by more persons jointly, the
requirement of identity of applicants applies to the subsequent
application’), could only refer to a Treaties on industrial property of da
Gama Cerqueira of 1956 (cf fn 180 and the bibliography). The case law
to which Wieczorek has referred to, apart from the fact that it dated
from 1910, 1912, 1913, 1914, 1917 and 1958 (although the latter not en-
tirely to the point because of the specifics of the UK Patent Act), was by
no means consistent in the relevant respect and handed down exclusively
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 9
more persons, the wording of the provision does therefore
not exclude each of them as being entitled to priority.21
That the interpretation by Ladas and Scharen is to the
point is particularly evident if the law governing the fil-
ing of the respective applications, including the naming
of applicants, leads to differences in the applicants
named in the priority and the subsequent application.
As a consequence, that law determines whether the
applicants named in the application claiming the prior-
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ity under Article 87 (1) EPC (Article 4 A (1) PC) are en-
titled to claim the priority, either because they were
named among the applicants in the priority application
or because they are ‘successors in title’ of those named
among the original applicants, and the missing appli-
cants from the priority application could not be named
because under applicable law, ie the law under which
the basis for the priority right was created, as ius cogens,
they lacked the status of a ‘successor in title’.
It should be remarked, therefore, that the meaning
of ‘any’ in Article 4 (1) PC as well as in Article 87 (1)
EPC is not synonymous with the phrase ‘all the per-
sons’ and does not connote any intention to require the
later application in which priority is claimed to have as
applicants every one of the persons (or their successor
in title) who had filed the earlier application. There are
no words in Article 4 (1) PC or Article 87 (1) EPC to
support a construction that requires ‘any’ to be read,
against its ordinary meaning, as ‘all of the . . .’.22 Nor is
there any object or purpose of the priority right that
supports such a construction. Had the legislators of the
PC and of the EPC intended to require that every one
of the persons who had filed the earlier application (or
their successors in title) were applicants for the second
by patent offices and not by any court, let alone a court of last instance
(pp 146–47 and the fns 181–90).
20 U Scharen, ‘Wie ist das Erfordernis der so genannten Anmelderidentität
des Art. 87 I EPÜ zu verstehen?’ (2016) GRUR 446ff.
21 ibid 447, in the original German: ‘Das ist eine breit gefasste
Formulierung, die keine Beschränkung erkennen lässt, sofern die betref-
fende Person sich nur schon als Anmelder betätigt hat. Der Wortlaut der
Bestimmung schließt deshalb nicht aus, im Falle einer Anmeldung durch
mehrere Personen auch jede von ihnen als prioritätsberechtigt
anzusehen.’ Scharen explicitly refers to the decision T 15/01, point 26 of
the Reasons, where the TBA emphasized the broad wording of art 87 (1)
EPC as well as the fact that the European legislator has adopted a priority
system which also recognizes ‘internal’ priority and thereby extended the
priority regime beyond the minimum standards of the PC, which only
regulates ‘external’ priority (OJ EPO 2006, 153, 177–78). Contrary K
Grabinski in Benkard, Europäisches Patentübereinkommen (J Ehlers/U
Kinkeldey, eds) (3rd edn, C.H. Beck Publisher 2019) (in the following
Benkard EPÜ), art 87, marginal note 15, emphasizing that the priority
claiming application must be filed by all applicants of the priority appli-
cation, or their successors in title.
22 This is equally true for the terms ‘celui qui’ and ‘jedermann’ in the EPC,
and for those used in official translations of the EPC, eg into the Italian
‘chiunque’, or in the Spanish language ‘quien’.
Joseph Straus  Right to Priority in Article 4A (1)
application in order for priority to be validly claimed
they would have used different language to express this.
Indeed, neither Article 88 EPC, which specifies how to
claim the right of priority, nor Rules 52 and 53 of the
EPC Implementing Regulations, which set out the crite-
ria for claiming priority, make reference to the appli-
cant satisfying the EPO that the right is claimed by all
‘persons’ of the priority application. In the absence of
such language, to the understanding of this author, the
correct construction of Article 87 (1) EPC requires (in
respect of the applicants) only that the second applica-
tion in which priority is claimed be filed by at least one
of the persons (or their successor in title) who filed the
first application.
EPO and the priority test23
The issue of whether the priority application was duly
filed and had established the filing date under the appli-
cable national law, as well as the issue of identity be-
tween the applicant(s) of the priority application and
those of the European patent application claiming that
priority, as a rule24, do not cause any particular prob-
lems for the EPO. In the case of identity of the appli-
cant(s) named in the priority application and those
named in the European patent application, nothing is
to be examined by the EPO, because for a valid priority
claim neither is required that the applicant(s) of the
priority application was (were) entitled to file the appli-
cation, nor that they were entitled to the invention
claimed/disclosed therein.25 Also, the identity of the
23 For a well arranged summary of the respective EPO case law, with all the
necessary references, cf the Decision T 205/14 of June 18, 2015 (not
published).
24 Except in the context of ‘successor in title’, where after some period of
uncertainty, a decision of June 18, 2015 (T 0205/14) held what can be
viewed as settled case law of the EPO. The Board, first, clarified that art
87 EPC was silent on the requirements for a valid transfer of rights of pri-
ority. In other words, 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 (point 3.3, last paragraph of the
Reasons). It further clarified that in its judgment, the assessment of
whether the applicant of a European patent application is ‘successor in
title’ within the meaning of art 87(1) EPC of the right of priority deriving
from an earlier application is the exclusive concern of national law (point
3.6.3, second para last two sentences). In this regard, the Board explicitly
concurred with the decisions T 1008/96 of June 25, 2003, point 3.3 of the
Reasons, T 160/13 of April 23, 2015, point 1.1 of the Reasons and J 19/87
of March 21, 1988, point 2 of the Reasons. At the same time the Board
explicitly disagreed with the decision T 62/05 (point 3.8 and 3.9 of the
Reasons), according to which 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 art 72 EPC (point 3.6.1).
Moreover, the Board also explicitly concurred with a decision of the
German Federal Supreme Court of April 16, 2013, GRUR 2013, 712—
Fahrzeugscheibe, according to which Article 87 EPC does not require a
formal and separate assignment as provided for by art 72 EPC.
25 cf eg K Grabinski in Benkard EPÜ (n 21) art 87, marginal note 3; C-P
Brandt in Busse and Keukenschrijver (A Keukenschrijver, ed),
ARTICLE 691
inventor(s) named in the two applications is not re-
quired.26 In case the entitlement is contested, the legal
dispute between the parties involved is a matter to be
decided by the competent national court and not by the
EPO.27 However, another requirement for claiming pri-
ority under Article 87 (1) (b) EPC, which in the PC can
only be deduced from Article 4 C (4), namely that the
European patent application must be in respect of the
same invention, not least because of the relatively com-
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plex rules of Articles 4 H and 4 F PC, can constitute a
serious obstacle.
As emphasized by the EBA in its Decision G 1/15 of
29 November 2016,
. . . the sole substantive condition laid down by the EPC
(and the Paris Convention) for the right of priority to be
validly claimed is that the priority document and the sub-
sequent filing are directed to the same invention, Article
87(1) EPC. Article 4C (4) of the Paris Convention men-
tions ‘the same subject’. However, the meaning is undoubt-
edly identical.
As a matter of principle, where a right is established by an
international treaty or convention, or by national law, it
cannot be restricted by imposing supplementary conditions
in administrative rules or guidelines or even in
jurisprudence.28
In the context of the purpose and object of the priority
right as established, based on the interpretation rules of
the Vienna Convention, by the Board of Appeal
Decision T 15/01 of 17 June 2014,29 this decision of the
EBA makes it clear that the interests of competitors of
Patentgesetz (7th edn, De Gruyter Publisher 2013) § 41, marginal note
10; Wieczorek (n 19) 110.
26 cf FK Beier and J Straus, ‘Probleme des Prioritätsrechts im Patentrecht’
(1991) GRUR Int 255 (260); E Ullmann in Benkard, Patentgesetz (10th
edn, C.H. Beck Publisher 2006), Internationaler Teil PatG, marginal note
43, with further references (the 11th edn of Benkard (2015) does not
touch upon this issue anymore); R Moufang in R Schulte (ed),
Patentgesetz mit Europäischen Patentübereinkommen (10th edn, Wolters
Kluwer Publisher 2017) § 41, marginal note 28 in fine; Ruhl (n 13) 101.
The issue of inventorship does not play any role in the context of claim-
ing priority (cf T0005/05 of November 9, 2005, point 4.2, last paragraph
of the Reasons).
27 EBA G 3/92 of June 13, 1994, OJ EPO 1994, 607, point 3 of the Reasons
(at 611 ss); cf also Ruhl (n 13) 75.
28 Point 4.2 of the Reasons (OJ EPO 2017, A 82,1 (at 24)). In a previous
case in which the EBA had to decide on what constitutes ‘the same
invention’ when multiple priorities are at hand, it arrived at the following
general conclusion: ‘The requirement for claiming priority of ‘the same
invention’, referred to in Article 87(1) EPC, means that priority of a pre-
vious application in respect of a claim in a European patent application
in accordance with Article 88 EPC is to be acknowledged only if the
skilled person can derive the subject-matter of the claim directly and un-
ambiguously, using common general knowledge, from the previous ap-
plication as a whole.’ (G 2/98 of May 31, 2001, OJ EPO 2001, 413–
Headnote).
29 OJ EPO 2006, 180 (see above text accompanying fns 8 and 9).
692 ARTICLE
an applicant invoking the priority right, and that of the
public at large, are safeguarded by:
(i) the established date of the duly filed application,
as required in Article 87 (2) and (3) EPC, Article 4 A
(2) and (3) PC; (ii) the requirement for a timely decla-
ration claiming the priority, including the submission
of the prescribed documents, and the corresponding
publication of the respective information, as set forth in
Article 88 and Rules 52 and 53 EPC, in accordance with
Article 4 D (1) and (3) PC;30 and (iii) the EPO ‘same
invention’ test under Article 87 (1) (b) EPC.31 The pri-
ority right is established on the referred to provisions of
the EPC and PC, as well as the national law of the
country of priority filing. As explicitly emphasized by
the EBA, the priority right therefore ‘cannot be re-
stricted by imposing supplementary conditions in ad-
ministrative rules or guidelines or even in
jurisprudence’.32
Without a single reference to the object and purpose
of the priority right, as interpreted by the TBA in the
decision T 15/01 of 17 June 2004,33 in the decision T
788/05 of 8 May 2007, the TBA held as follows:
The term ‘a person’ in Article 87 (1) EPC (or ‘an applicant’
in Article 88 (1) EPC) implies that the applicant be the
same for ‘the first application’ (or previous application’ in
Article 88 (1) EPC) and for the later application for which
a priority right is claimed. The required identity for the
applicants originates in that the priority right is part of the
applicants right.
In the case of D1 in which two co-applicants (Terumo and
Tokin) are present, this means that the priority right
belongs simultaneously and jointly to the two applicants,
who thus constitute a legal unity unless one of them
decides to transfer his right to the other applicant, who
then becomes his successor in title and this before the filing
of the later application. Since no evidence for such a trans-
fer was submitted to the Board, D1, independently of the
question of the same invention, could only serve as a basis
for claiming priority for the filing of a later application des-
ignating both applicants. But since the present application
was only filed by one applicant (Terumo), D1 could not
30 cf also E Ullmann, ‘The Priority Right in the Patent Law – Use and
Misuse?’ in Prinz zu Waldeck and others (eds), Patents and Technological
Progress in Globalized World, Liber Amicorum Joseph Straus (Springer
Publisher 2009) 78–79.
31 In a communication of June 14, 2017, the TBA 3.3.01 (Appeal No T
0239/16) observed: ‘Whereas several requirements of Articles 87 and 88
EPC, namely the substantive condition of ‘the same invention’, are
clearly protecting legitimate interests of third parties, the definition of
the persons entitled to claim a right of priority might be seen to protect
the person who has filed an application that could give rise to a right of
priority from unlawful appropriation. It might therefore be questioned,
whether the purpose of the definition of the person entitled to claim a
right of priority militates against or in favor of a power to decide on
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 9
represent the ‘first application’ within the meaning of
Article 87 (1) EPC.34
Although the TBA has not offered any legal basis for its
assumption of the ‘legal unity’ of the two Japanese
applicants of the claimed priority application, and al-
though the not named applicant of the original applica-
tion did not only not dispute the entitlement to the
priority claim of the applicant of the European patent
application at hand, but also could not join the applica-
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tion after its filing date, the result of this decision has
been that the case law of the EPO since then requires
that in a case of two or more applicants of the priority
application, all of them (or their successors in title)
must also be the applicants of the European patent ap-
plication claiming that priority.35
Subsequently, the T 788/05 Decision of the TBA has
also decisively influenced the case law of the UK courts.
In Edwards Lifesciences AG v Cook Biotech Inc,36 in
which the priority of an US application filed in the
names of three persons, all as ‘joint inventors’, in
which, however, only one of them filed the application
claiming that priority, Kitchin J, denied the priority
claim, because the applicant were not ‘successor in title’
of the three original applicants under Article 4 PC. In
the context of interest, Mr Justice Kitchin argued, inter
alia, as follows:
Successor in title here must mean successor in title to the
invention, as the parties before me agreed.37
A person who files a patent application for an invention is
afforded the privilege of claiming priority only if he himself
filed the earlier application from which priority is claimed
or if he is the successor in title to the person who filed that
earlier application. If he is neither the person who filed the
earlier application nor his successor in title then he is de-
nied the privilege. Moreover, his position is not improved
if he subsequently acquires title to the invention. It remains
the case that he was not entitled to the privilege when he
filed the later application and made his claim. Any other
interpretation would introduce uncertainty and the risk of
unfairness to third parties. In reaching this conclusion
issues regarding the legal entitlement to the right of priority (i.e. on the
ownership and transfer of said right)’ (point 3.4.8 of the Provisional
Appreciation of Substantive and Legal Matters).
32 G 1/15, point 4.2 second para of the Reasons (OJ EPO 2017, A 82,24)
(emphasis added J.S.).
33 OJ EPO 2006, 180 (see above text accompanying fn 8).
34 Point 2 of the Reasons (not published).
35 cf eg the Decision T 205/14 of June 18, 2015, point 3.3, first para of the
Reasons (not published).
36 [2009] EWHC 1304 (Pat).
37 Id No 93.
Joseph Straus  Right to Priority in Article 4A (1)
I derive a measure of comfort from the fact that the Board
of Appeal of the EPO has adopted the same approach to
the interpretation in two cases: J 0019/87 and T 0062/05.38
The US application was filed in the names of Mr.
Obermiller, Mr. Osse and Ms. Thorpe, all as joint inven-
tors. It was not filed by Mr. Obermiller alone and therefore
he was not ‘a person’ who had ‘duly filed an application for
a patent’ within the meaning of Article 4A (1) of the Paris
Convention. Once again, this approach is consistent with
that adopted by the Board of Appeal of the EPO in case T
0788/05.39
Mr Justice Birss most authentically described, in Accord
Healthcare Ltd v Research Corporation Technologies,
Inc,40 how the Edwards v Cook precedent, in which
Kitchin J made no attempt to critically question the T
0788/05 decision against the object and purpose of the
priority right, as required by the interpretation rules of
the Vienna Convention, has been followed by the UK
courts:
Edwards v Cook has been followed and applied at first in-
stance on a number of occasions including at least the fol-
lowing: Arnold J in KCI Licensing v Smith & Nephew
[2010] EWHC 1487 (Pat) and Idenix v Gilead [2014]
EWHC 3916 (Pat), Henry Carr J in Fujifilm v Abbvie
[2017] EWHC 395 (Pat); and me in HTC v Gemalto [2013]
EWHC 1876 (Pat). In KCI Licensing v Smith & Nephew
and HTC v Gemalto the judges (Arnold J and myself re-
spectively) accepted a significant softening to what other-
wise might have been the rigor of the rule that the title
must be secured by the time the international application
is made, by accepting an analysis based on common law
principles distinguishing the equitable and legal title to
property. If the relevant local law meant that the equitable
or beneficial title to the priority right was in the hands of
the person making the priority claim in the international
application, that was held to be good enough even though
that person did not then hold the legal title under the local
law and could only perfect their title after the event.41
After Birss J accomplished his detailed analysis of the
cases referred to above, he returned to the case at issue
and observed as follows:
In my judgment Accord is right in law that following from
those principles, a person who at the relevant time and un-
der the relevant applicable law, acquired only the bare legal
title to an invention and not the equitable title, when the
equitable title is held by another, does not then hold the
substantive right and title to the claim to priority.42
38 Id No 95.
39 Id No 99.
40 [2017] EWHC 2711 (Pat).
41 Id No 67.
42 Id No 76 [emphasis added JS].
43 Id No 77 [emphasis added JS].
44 cf id No 78.
ARTICLE 693
However I cannot help but observe that if priority is lost
this patent would be revoked over a publication by the in-
ventor in the period between the priority date and the fil-
ing date which I infer was assumed to be a safe thing to do
because it was assumed by everyone involved that priority
would be successfully claimed. There will be many cases
like this. There is no obvious public interest in striking down
patents on this ground, unlike all the other grounds of
invalidity.43
Unsatisfied with the settled law, Birss J de lege ferenda
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developed some alternative solutions how to solve the
problem,44 but, eventually, concluded: ‘Nevertheless re-
gardless of these tentative suggestions, I will apply the
law as it is settled at this level.’45 Although Mr Justice
Birss did not mention the object in purpose of the pri-
ority right as it has to be interpreted under the Vienna
Convention rules, it is not far-fetched to understand
him as seeing the ‘settled law’ not adequately taking ac-
count of the object and purpose of the priority right.
The apodictic repetition of poorly reasoned holding of
the T 0788/05 TBA decision reminds one of the remark
made by Lord Walker in the well-known Kirin Amgen
case of the UK House of Lords, namely: ‘There is always
a danger that any judicial summary of principle may,
precisely because it is concise, practical and repeatedly
cited, take on a life of its own, as if it were a statutory
text with its own problems of construction to be
resolved.’46
Indeed, the T 788/05 by construing multiple appli-
cants of a priority application as a ‘legal unity’ and their
priority right as ‘jointly owned’ as seemingly an autono-
mous legal notion of the PC, generated a construct for
which no statutory basis can be found either in the PC
or in the EPC provisions. This construct not only
ignores the (ordinary) meaning of ‘any’ in Article 87(1)
EPC and Article 4A (1) PC, as well as the law under
which the formal legal basis for the priority right was
established, but also and most importantly, leads to a
result which manifestly contradicts the purpose and ob-
ject of the priority right as identified in T 15/01, namely
to fulfill the general purpose it serves, which is ‘to assist
the applicant in obtaining international protection for
his invention’.47 As Birss J correctly observed, ‘there is
no obvious public interest in striking down patents on
this ground’.48 If one asks ‘cui bono’, ‘to whose benefit’,
the answer is simple, to the benefit of the opposing
45 Id No 78, in fine.
46 Judgment of October 21, 2004, [2004] UKHL 46, [2005] R.P.C. 169, No
138, last sentence.
47 T 15/01, point 34 of the Reasons (OJ EPO 2006, 18-181).
48 Accord Healthcare Ltd v Research Corporation Technologies Inc, [2017]
EWHC 2711 (Pat), No 78 in fine.
694 ARTICLE
competitors, to whose benefit an application which first
disclosed an invention lost the actual date on which it,
as a matter of uncontested (!) fact, enriched the ‘state
of the art’. The general public is interested in seeing the
interests of those inventors, and their successors in title
respectively, who first disclose their inventions in a pat-
ent application, adequately safeguarded by a properly
applied priority right. As already explained in detail,
specific provisions of the PC as well as the EPC fully
safeguard the interests of competitors. The value for the
public at large of the contribution of a given invention
to the state of the art by its disclosure on a firmly estab-
lished date, the actual reason to create the priority right
for a limited time, based on considerations repeatedly
mentioned, has not the least to do with the fact, of
whether all or only some of the applicants named in the
priority application, or their successors in title, are
named in the application claiming that priority.
Priority right—a property right
The above highlights that the EPO case law, rather than
protecting the priority right as held by the applicant,
has allowed opportunistic challenges during opposition
by third parties who merely seek another tool for inva-
lidating a patent. This situation is in contrast to the en-
titlement to a European patent or application where the
challenge can only be brought by a party who asserts
that it should be entitled to the patent or application.
Indeed, the TBA 3.3.01 in its already referred to
communication of 14 June 2017,49 wrapped in a ques-
tion, observed that in a more general context of the en-
titlement to the priority right, apart from Articles 87
(1), 88 and 89 EPC,50 also Articles 60, 61 and 138 EPC
might have a bearing. It stated as follows:
Article 87 (1) EPC parallels Article 60 (1) EPC concerning
the entitlement to the right to the invention: Article 60 (1)
EPC defines the ‘inventor’ as the entity to whom the right
to a European patent belongs and, by reference to the ‘suc-
cessor in title’, establishes that this right is transferrable. As
in Article 88 (1) EPC, Article 60 (3) EPC uses the term ‘ap-
plicant’ in the sense of the natural or legal person filing a
European patent application. Thus, both provisions imply
a distinction between, on the one hand, the existence and
49 Above fn 31.
50 It should be recalled that the EBA in G 1/15 of November 29, 2016, em-
phasized that art 89 EPC ‘makes it clear that the right of priority is
intended to protect the applicant against third parties filing a patent ap-
plication in respect of the same invention during the twelve-month pe-
riod after the filing date. It has to be read in conjunction with Article 60
(1) and (2) EPC, which define entitlement to the grant of a European
patent; this right belongs to the inventor and, in the case of conflict, to
the person who filed first’ (point 4.3.2 of the Reasons, OJ EPO 2016, A
82, 24).
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 9
the ownership of the right to the patent or of the right of
priority and, on the other hand, the exercise of that right
when filing a European patent application by which the
right of priority becomes effective. Of course, the legal fic-
tion of Article 60 (3) EPC cannot be extended to the enti-
tlement of an applicant for a European patent to claim
priority from a previous application since its wording does
not refer to the right of priority which is distinct and inde-
pendent of the right to a patent . . .. However, one might
nevertheless question whether the departments of the EPO
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have been entrusted by the sovereign Contracting States
with the power to decide on issues regarding the legal enti-
tlement to the right of priority (i.e. on the ownership and
transfer of said right). The division of powers between the
EPO and the Contracting States established by Article 60
EPC, Article 61 EPC and Article 138 (1) (e) EPC depriving
the departments of the EPO of the power to determine dis-
putes 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 (see
G 3/92, OJ EPO 1994, 607, point 3), could be considered
of general nature. The reasons that lead to the division of
powers between the EPO and the contracting states seem
also valid for the examination of the legal entitlement to
the right of priority.51
Based on the preparatory documents to the EPC,52 the
TBA in its further deliberations, first pointed to the fact
that the Contracting States clearly opposed the idea that
disputes traditionally falling within the sphere of prop-
erty law should be dealt with authorities other than na-
tional civil courts, and that the option to vest the EPO
with the central authority to decide who is entitled to
the patent, was abandoned. Therefore, to the under-
standing of the TBA, it follows from Articles 60, 61 and
138 (1) (e) EPC ‘that questions of legal entitlement
(ownership and transfer) can be considered to fall, as a
matter of principle, within the sole jurisdiction of the
national courts or other authorities responsible’. And,
the TBA added: ‘Such considerations could also apply
to the legal entitlements to the rights of priority (cf.
J 11/95 of 27 November 1997, point 4, last sentence).’53
Although only provisional and not binding and not
applied in the case because the priority issue eventually
played no role, these deliberations of the TBA deserve
particular attention. The fact that the TBA, in the light
of the carefully examined settled case law of the EPO,
51 Point 3.4.5 of the ‘Provisional Appreciation of Substantive and Legal
Matters’. In this context, the TBA made reference to the Minutes of the
Munich Diplomatic Conference for the setting-up of a European System
for the Grant of Patents (M/PR I, Annex I, Report on the Results of Main
Committee I’s Proceedings, p 198).
52 Minutes of the 10th Meeting of the Working Party I, held in
Luxembourg from 22 to 26 November 1971, BR/144 e/71, pp 18–19.
53 Point 3.4.7 of the ‘Provisional Appreciation of Substantive and Legal
Matters’.
Joseph Straus  Right to Priority in Article 4A (1)
raised the question of the competence of the EPO to
decide on the entitlement to the priority right, is most
remarkable and can only imply that to the understand-
ing of the Board the settled case law does not ade-
quately take into account the object and purpose of the
priority right. Whereas Birss J expressly disagreed with
the case law as settled at the level of the UK High
Court, which he nevertheless followed,54 the TBA
3.3.01, by inducing the discussion, put a clear question
mark behind the current EPO case law and indirectly
suggested how the issue could be adequately solved.
The Board is correct in observing that the EPC does
not provide the EPO with the power to negate the right
of priority where the ‘same applicant’ rule is not com-
plied with. Indeed, neither Article 88 EPC, which speci-
fies how to claim the right of priority, nor Rules 52 and
53 of the Implementing Regulations, which set out the
criteria for claiming priority, make reference to the ap-
plicant satisfying the EPO that the right is claimed by
all ‘persons’ of the priority application, nor that the
EPO should assess this, nor that any failure by the ap-
plicant in this respect should lead to loss of priority and
thereby in many cases, loss of the patent. It is to be
noted that, since the first, foreign filing is not published
before the filing of the European patent application
(unless earlier publication has been requested), it is
only the applicant or some person connected to the ap-
plicant, who has knowledge of this filing. Thus, the
requirements to cite the file number of the first filing
(Rule 52 (1) EPC) and to provide a copy of the first ap-
plication as filed certified by the foreign national office
(Rule 53 (1) EPC), serve to ensure a nexus between the
applicant for the European patent application and the
first application. Based on the facts of the EPO cases, in
which the issue of ‘successor in title’ and the ‘timely
transfer’ of the priority right to the actual applicant of
the European patent application became the key for
assessing the entitlement to the right of the claimed pri-
ority, it is to be assumed that the foreign patent office
issues such certified copies of the first application only
to the applicants, actually any applicant thereof, in case
of two or more, in the sense of ‘any person who duly
filed’, ie to those entitled to that application under the
54 Birss J, inter alia, suggested that ‘An alternative could be to apply the
same approach and the same applicable law to the priority claim as
applies to ownership of the invention and the right to the patent’. But he
finally stated: ‘Nevertheless regardless of these tentative suggestions, I will
apply the law as it is settled at this level.’ (Accord Healthcare Ltd v
Research Corporation Technologies Inc [2017] EWHC 2711 (Pat), No 78).
55 Guidelines for Examination, Part A, ch XI, 5.2. The fact that due to elec-
tronic filing the major patent offices may now be able to obtain the prior-
ity documents from the register of the patent office where the priority
filing was made, does not affect the legal principle set forth in the Rule 54
EPC and applied in the Examination Guidelines. Making available of
ARTICLE 695
applicable law. It has to be emphasized that under Rule
54 EPC, ‘any priority document (i.e. the certified copy
of the European patent application together with the
certificate stating the date of filing thereof) will only be
issued to the (original) applicant or his successor in title
on written request. If such request is missing, the EPO
will invite the requester to file it and will supply the cer-
tified copy only once this requirement has been
fulfilled’.55
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These criteria lend support to a presumption that
the party claiming a right of priority is entitled to that
right, and that that right could be challenged only be-
fore a competent national court or authority respec-
tively, only by an entity claiming the entitlement to the
priority right at issue. In other words, in case an appli-
cant claiming the priority in a European patent applica-
tion is one of the two or more applicants who filed the
priority application (or his successor in title), his enti-
tlement to the priority right should not be contestable
either by the EPO, or by third parties in opposition
proceedings. The issue, if any, which may exist between
the applicants (or their successors in title) not named
in the European patent application and its applicant, is
undisputedly a matter of exclusive jurisdiction of the
competent national courts. No single justification can
be found for the result of the present case law, accord-
ing to which the not named applicants, who have, for
what reason so ever, not in one way or other transferred
their right to priority to the actual applicant, are pre-
vented to join the applicant and enjoy the timely exer-
cised priority right, with the consequence that the
priority right is denied, and in most cases the patent re-
voked to the detriment of all, ie all those who have as
the first ones enriched the state of the art.
How manifestly unreasonable the priority entitle-
ment case law, which allows successful challenging of
the priority right by third parties on the sole ground
that the European patent application claiming priority
was not filed by all applicants (or their successors in ti-
tle) of the priority application, is, transpires from the
following facts. The validity of a priority claim under
Articles 87–88 EPC under the settled case law is to be
confirmed without any examination, and also without
priority documents by the EPO automatically to foreign patent offices
upon their request presupposes that a control mechanism is imple-
mented in the system which ensures that only the original applicant(s)
(or his (their) successor(s) in title), but not an applicant claiming prior-
ity based on information (priority date and number) acquired, e.g. by
fraud, will have access to the priority documents automatically reaching
his patent office file. In this context attention is to be drawn to the fact,
that the patent office of the subsequent filing, in contrast to the ‘classic
paper regime’, until receiving the priority documents, disposes of no
mechanism to check whether the applicant has lawfully acquired the in-
formation on priority filing.
696 ARTICLE
any possibility of third parties to contest it, in a case in
which, for instance, the priority application X, disclos-
ing and claiming the invention Z, was filed by A and B
as co-applicants, and in which A and B as co-applicants
file subsequently a European patent application claim-
ing the priority of X, although A and B were neither en-
titled to the invention Z claimed in X, nor to the filing
of X and also not to the filing of the subsequent
European application, because they simply have stolen
the invention Z from Y. Under such circumstances, Y,
entitled to the invention and to the grant of the
European patent, based on a final decision of the com-
petent national court, confirming his/her entitlement to
the invention Z and to the grant of the European pat-
ent, can benefit from the remedies provided for
in Article 61 (1) (b) and (2) EPC. Following the EBA in
G3/92, Y can file a new European patent application in
respect of the invention Z, even if the European appli-
cation of the unlawful applicants A and B would not
anymore be pending before the EPO because it had
been, for example, withdrawn.56 As a consequence of
Article 61 (1) (b) and (2) and Article 76 (1) EPC,57 the
new application of Y will be deemed to have been filed
on the date of filing of the earlier original application
and shall have the benefit of any right of priority of the
earlier application by the unlawful applicants A and
B.58 By holding that under Article 61 (1) (b) EPC a per-
son, based on its entitlement to the invention (and to
the grant of the European patent), as adjudged by a fi-
nal decision of a competent national court59 handed
down after the 12 months priority period has lapsed,60
can file a new European patent application and enjoy
the priority of the earlier original usurping application
of unlawful applicants, the Enlarged Board of Appeal,
56 Point 5.4, 2nd para of the Reasons (OJ EPO 1994, 618; it should be noted
that a minority of the EBA dissented, id. 623 ss). Concurring K-J Mellulis
in Benkard EPÜ (n 21) art 61 EPC, marginal note 43; critical T Bremi
and D Stauder in Singer and Stauder(n 3) art 61, marginal notes 6–8,
and fn 10 at p 344, referring to a new reference to the Rules of the
Implementing Regulations in art 76(1) EPC; Along the same lines RML
Schneckenbühl in U Fitzner, R Lutz and Th Bodewig (eds),
Patentrechtskommentar (4th edn, C.H. Beck Publisher 2012) art 61, mar-
ginal note 40.
57 Art 61 (2) EPC sets forth that art 76 (1) EPC shall apply mutatis mutan-
dis to a new European application filed under paragraph 1 (b). Art 76 (1)
EPC provides that divisional applications ‘shall be deemed to have been
filed on the date of filing of the earlier application and shall enjoy any
right of priority’.
58 EBA G 3/92, points 5.3 and 5.4 of the Reasons (OJ EPO 1994, at 617,
618).
59 The competence of national courts is regulated in arts 2–6 of the
Protocol on Jurisdiction and Recognition of Decisions in respect of the
Right to the Grant of a European Patent (Protocol on Recognition). It
should be only noted that in case neither party of the dispute has its resi-
dence or principal place of business in one of the Contracting States to
the EPC, the District Court Munich I (Landgericht München I) is the
competent court. According to K-J Mellulis in Benkard EPÜ (n 21) art
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 9
in line with the solution adopted by the EPC legislator,
made it clear that, to the same extent to which the deci-
sion on the entitlement to the invention and to the
grant of the European patent is exclusive competence of
national courts applying national law, the decision on
the entitlement to the right of priority, as a matter of
principle, is equally exclusive competence of national
courts applying national law.
It follows that the property right of priority is evi-
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dently linked to the right to invention and to the enti-
tlement to the grant of the European patent,61
irrespective of the fact that it can be transferred to and
exercised by a successor in title. Moreover, the EBA de-
cision makes it crystal clear that, according to Article 61
(1) (b) and (2) EPC in conjunction with Article 76 (1)
EPC, the priority right of an application can be recog-
nized, and vested in a different proprietor, also after the
priority term has lapsed,62 based on a final decision of a
national court applying national law!63 This applies also
in case that the final decision of the competent national
court has adjudged the applicant invoking Article 61
(1) (b) and (2) EPC, only a share in the entitlement to
the invention and the grant of the European patent, eg
based on co-inventorship.64 Thus, a co-inventor who
has neither been named (co) applicant in the priority
application nor in the European patent application, is
vested with the benefit of any priority right of an appli-
cation, after the priority period has lapsed, based on
her/his entitlement to a share (co-ownership) in the in-
vention claimed in the European patent application, as
adjudged by a national court applying national law! In
other words, after a successful entitlement action before
a national court, applying national law, the new own-
er(s) of the right to the invention and the patent
61, marginal note 16, however, also the competence of a court outside
the Contracting States to the EPC, should not be excluded.
60 This can be assumed for the facts in the case G 3/92, bearing in mind
that a new application according to art 61 (1) (b) EPC has to be filed ‘no
later than three months after the decision recognizing his entitlement has
become final’ (Rule 16 (1) (b) EPC), and the earlier original usurping ap-
plication must have been filed within the priority period, and in the case
at issue was even not anymore pending before the EPO.
61 cf also R Teschemacher, Wann ist eine Anmeldung eine erste Anmeldung
im Sinne des Prioritätsrechts? (When is an Application a first Application
in the Sense of the Priority Right?), who states that although the priority
right evolves from the act of filing the application, it were, however, at-
tached already to the act of invention (in the original German: ‘Das
Prioritätsrecht entsteht zwar durch den Akt der Hinterlegung, es ist aber
schon im Akt der Erfindung angelegt.’). Mitt. 2007, 536 (536).
62 As a rule this will apply also in cases in which the application of the un-
lawful applicant(s) will still be pending before the EPO.
63 K-J Mellulis in Benkard EPÜ (n 21) art 61 EPC, marginal note 54, notes
that in this context the priority right is safeguarded by the gimmick refer-
ence (‘Kunstgriff’) to art 76 (1) EPC in art 61 (1) (b) and (2) EPC.
64 cf K-J Mellulis in Benkard EPÜ (n 21) art 61 EPC, marginal note 64,
where a detailed discussion of possible scenarios for such circumstances
can be found.
Joseph Straus  Right to Priority in Article 4A (1)
automatically acquire(s) also the priority right, al-
though the priority term of 12 months has already
lapsed. Consequently, the priority is not found invalid
at this later point in time when an additional applicant
becomes a proprietor, having not been a proprietor at
the time priority was claimed. It therefore lacks any
logic, at the time the priority right is claimed, for the
EPO to deny the claim based on a mismatch between
the applicant(s) on the priority application and those
on the application claiming priority, and not to allow
the missing applicant(s) (or their successors in title), to
join the application, based on their own decision and in
agreement with the applicant.
This design, enshrined in the EPC, in which neither
the EPO itself, nor the competitors in the proceedings
before the EPO, can contest the priority right of an ap-
plicant invoking Article 61 (1) (b) and (2) EPC, on any
other ground than those related to the formalities ex-
plicitly set forth in the EPC, and that the ‘same
invention’ requirement of Article 87 EPC is not met,
stands scrutiny as regards the legal certainty and the ad-
equate protection of interests of all involved, ie the per-
son(s) entitled to the grant of the European patent, the
public at large and the legitimate interests of competi-
tors. Against this legal background, and in the light of
the established purpose and object of the priority right,
in the absence of any specific provision of the EPC or
PC, EPO’s denial of the claim to the priority right in-
voked by a co-applicant(s), ie ‘any person who duly fil-
ed’, of the priority application, as generating legal
uncertainty to the disadvantage of competitors, for the
sole reason that one (or more) of the co-applicants of
the priority application (or their successors in title),
have neither been named in the European patent appli-
cation, nor have they, or their successors in title, trans-
ferred their priority right(s) to the actual applicant(s),
lacks any legal basis and is ultra vires. In the unlikely
case that each or some of the co-applicants would sepa-
rately claim the priority of the same application in the
European application, if the priority claim would relate
to the same invention, based on the documents re-
quired under Article 88 EPC, the EPO could easily clar-
ify the issue with the applicants concerned and
consolidate the proceedings. In case, however, that the
priority claim would relate to a different invention,
based on the priority right, which is vested in ‘any per-
son who duly filed’, the EPO will have to examine the
same invention issue, based on the disclosure contained
in the priority document, and applying the standards
developed in G 2/98.65
65 cf fn 26.
ARTICLE 697
Conclusions
The right of priority constitutes one of the main pillars
for the functioning of the protection of IP rights at an
international level. The priority right was introduced al-
ready in the original version of the Paris Convention
for the Protection of Industrial Property in 1883. The
basic purpose of the priority right is to safeguard, for a
limited period of time, the interests of a patent appli-
cant in his endeavour to obtain international protection
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for his invention, thereby alleviating the consequences
of the principle of territoriality in patent law.
Therefore, the international priority provisions con-
tained in the PC have to be construed in a manner
which ensures that the general purpose they serve,
namely to assist the applicant in obtaining international
protection for his invention is fulfilled as far as possible.
This is also true for the priority system of the EPC
which has to be compatible with the standards set by
the PC in the sense that it should not give less protec-
tion, but which is not generally prevented from going
beyond those standards in favour of the applicant.66
Under the Vienna Convention rules, which control
also the interpretation of the EPC, the term ‘any per-
son’ who duly filed, used in Article 87 (1) EPC and
Article 4 A (1) PC, has to be given its ‘ordinary mean-
ing’, ie as ‘one or some indiscriminately of whatever
kind’, whereby this interpretation has to take into ac-
count the object and purpose the priority right was
designed to serve, namely to assist the applicant, in case
of more applicants, any of them, in obtaining interna-
tional protection for the invention(s) at stake.
Consequently, in case the priority application was filed
by more than one applicant, any of them (or their suc-
cessors in title) can validly claim the priority of that ap-
plication in a subsequent European patent application.
In the unlikely event that more than one of the original
co-applicants would claim the priority of the same ap-
plication in a separate European application, as shown
above, the EPO could easily handle the circumstances
by using available EPC mechanisms. Conflicts on the
actual entitlement between the original co-applicants,
or between them and third parties belong to the exclu-
sive jurisdiction of national courts applying national
laws. In case the applicant of a European patent appli-
cation is claiming the priority of an application in
which he is neither named as applicant, nor as co-
applicant, but acts as successor in title of at least one of
the original co-applicants, under the settled case law,
66 T 15/01, point 32 in fine, point 34 of the Reasons (OJ EPO 2006, 180–
181).
698 ARTICLE
the EPO will examine its entitlement based on the ap-
plicable national law.67
The EPC priority regime, consisting on the one hand
of its formality related provisions of Article 88 and
Rules 52 and 53, in line with the corresponding PC pro-
visions, and, on the other hand, of the sole substantive
condition for the right of priority to be validly claimed,
namely that the priority document and the subsequent
filing are directed to the same invention, as laid down
in Article 87 (1) EPC (mirroring Article 4 C (4) PC),
constitutes a complete system for proper functioning of
the priority right as a property right established by an
international treaty or convention. As emphasized by
the EBA, such a right cannot be restricted by imposing
67 See fn 24.
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 9
supplementary conditions in administrative rules or
guidelines or even in jurisprudence.68 To the under-
standing of this writer, the ‘same applicant rule’, intro-
duced in the case law of the EPO by the T 788/05,
constitutes such an inadmissible restrictive supplemen-
tary condition. Therefore, EPO’s decisions denying the
priority claim of an applicant of a European patent ap-
plication on the sole ground that the same applicant
rule were not met, lack any legal basis. Having regard to
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the EPC provisions controlling the EPO’s (non)compe-
tence for deciding on the entitlement to property rights
related to the grant of a European patent and, as
analysed in detail above, implicitly to the priority right,
such EPO decisions are to be viewed ultra vires.
68 G 1/15, point 4.2 of the Reasons (OJ EPO 20017, A 82, at 24).