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