In the
decision X ZR 49/12 “Fahrzeugscheibe”, the German Bundesgerichtshof had to
decide on the validity of a transfer of a priority right to a “successor in
title” according to Art. 87 (1) EPC .
Actually, the first (German) patent application had been filed in the name of a
subsidiary and the subsequent EP application had been filed by a mother company
in the same commercial trust. In the case at issue, German law was applicable
to the assignment.
In the
first-instance nullity procedure, the Bundespatentgericht had considered the priority
claim to be invalid such that the priority application turned into a poisonous post-published
national right under Art. 139(2) EPC.
The senate stated
that the transfer of the priority right Art. 87 (1) EPC does not impose any
specific formal requirements to be met. In particular, the requirements
of Art. 72 EPC
for the transfer of the application as a whole (assignment in writing with
signatures) do not apply when only the priority right is transferred.
This
finding is in contradiction to the decision T 62/05
of a technical board of appeal of the EPO, wherein the board found that “it ... appears reasonable to the Board to
apply an equally high standard of proof as the one required for the assignment
of an European Patent application by Article 72 EPC, i.e. that the assignment
of priority rights has to be in writing and has to be signed by or on behalf of
the Parties to the transaction”.
To be on
the safe side not only before the German courts but also before the EPO boards of
appeal, it therefore remains advisable to prepare a suitable assignment document in the
case of a transfer of the priority right.
Posted by
Michael Thesen
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