The year 2020—and now 2021—has been a busy year for the European Patent Office (EPO) as it works through several oppositions and appeals involving a number of CRISPR patents belonging to The Broad Institute, Inc., Harvard College, and the Massachusetts Institute of Technology (hereinafter “Patentee”). The EPO Boards of Appeal has already revoked a patent applied for by the Patentee for failing to list all of the inventors from a priority application. See author’s previous blog post here. However, there is a pending opposition case with the EPO (application EP 2825654) which involves a potential priority issue that applicants should be aware of in cases where an employment contract or agreement has included a generalized provision requiring the assignment of all future rights stemming from an inventor’s inventions to the employer.

In this case, the priority application was a U.S. application which was filed with the inventors as the applicants, and as such, the inventors were listed as the applicants on a subsequent PCT filing. Assignments were then signed by the inventors assigning their intellectual property (IP) rights to Harvard after the PCT filing, and filed to change the PCT applicant from the inventors to Harvard. However, the opponent of the EP 2825654 case (hereinafter “Opponent”) argued that the inventors were employed by Harvard and had previously signed an agreement assigning all their IP rights to Harvard, and as such, the inventors no longer owned the right to claim priority to the U.S. application.

In particular, the agreement allegedly signed by the inventors states, “I hereby assign to Harvard all my right, title and interest in all Developments that Harvard is entitled to own (whether solely of jointly with others) under the terms of the IP Policy, and all patent rights, copyrights and other intellectual property rights and moral rights in those Developments throughout the world.” The Opponent argues that the use of the terms “hereby assign” has been interpreted under U.S. law to mean that the inventor’s rights, title and interest are automatically assigned to the assignee once any such right comes into being. As such, because the inventors’ CRISPR work was done while under the employment of Harvard, and done using Harvard facilities, their patent rights in the CRISPR work would have transferred automatically to Harvard as soon as they vested. Therefore, the Opponent argues that the omission of Harvard as an applicant in the PCT filing was fatal to the priority claim.

Depending on the outcome of this case, applicants will need to be extra cautious when determining who the applicant should be when filing a PCT application. As further explained by the Opponent, it is common practice in the U.S. to have a subsequent assignment signed by the inventor—even when an initial employment agreement has already been signed—which can be used to record the transfer of IP rights with the U.S. Patent and Trademark Office. This also prevents Applicants from having to submit original employment agreements into the public record. However, according to the Opponent, this common practice of filing a subsequent assignment does not negate the fact that a transfer had already been made and agreed to within an employment contract.

While this case is still pending with the EPO, applicants who are considering foreign patent filings should be cautious and diligent in ensuring that the rules and regulations of each respective country are met. Applicants should consult the expertise of a patent attorney to ensure that proper rights of priority are being preserved.