Posted: June 10th, 2013
Fahrzeugscheibe, Federal Court of Justice, Germany, 16 April 2013, Case number: X ZR 49/12
The Federal Court of Justice ruled in a recent decision on the possibility to transfer a priority right within a corporate group. The decision clarifies the possibility to transfer the priority right arising from Art. 87 (1) EPC, following the decision of the EPO as of 14 November 2006, T 62/05, infra 3.6.
The Federal Supreme Court starts in pointing out that the law applicable to assess the validity of a transfer of rights shall be the law of the state where the priority document had been filed. In the case to decide, the priority document was a German patent application. Hence, the validity of the transfer had to be assessed with respect to German Law. It is to be noted that the Bundesgerichtshof based its decision on the International Private Law that was in force at the time of the transfer of the priority
right. With respect to a transfer of rights that took place after 17 December 2009, the applicable law would have to be assessed following the provisions of the Rome-I-Regulation (Reg. Ec 593/2008; Art. 14).
The BGH rules that a transfer of right is, following German Law, not restricted by any formal requirements. To come to this conclusion, the Bundesgerichtshof assessed another decision of the EPO (Technical Board of Appeals, decision as of 14 November 2006 – T 62/05 infra 3.9). Therein the Board of Appeal was of the opinion that for the sake of legal certainty, Art. 72 EPC has to be applied in case of a transfer of a priority right, by way of analogy. But the Bundesgerichtshof denied this point of view stating that in Art. 87 EPC formal requirements for the transfer of a right cannot be found. This decision of the legislator has to be respected by the Contracting Member States of the EPO.
The Bundesgerichtshof then assessed the concrete transfer of right that had taken place in the corporate group. Within the corporate group, all entities were obliged to inform the other members of the corporate group of all inventions. The mere information to the head of IP division of the corporate group that a member of the corporate group had filed a patent application, shall then be regarded as an offer to transfer the priority right to the IP division of the head of the corporate group.
But the Bundesgerichtshof goes even beyond that. In the present case it ruled that it wasn't even necessary for the IP division to inform the entity that had filed the patent application on the acceptation of their offer. The pure fact that the IP division of the head of the corporate group filed the European Patent Application with the indication of the prior national patent application, is sufficient to accept the offer of the entity. It was not even necessary to inform the entity of the fact that the head of the corporate group had accepted that offer.
The decision is important as it would have to be applied under the AUPC, too, since Art. 24 (1) e) of the Agreement states that national law has to be applied in a case like this.
Read the entire decision (in German) here.
Head note: Konstantin Schallmoser