PCT applicant correction and priority entitlement

Under Article 87(1) EPC, the applicant for the later application must be the same person as the applicant for the priority application or its successor in title. The priority applicants were Dr M and Dr K. At the PCT filing date Nova was the sole applicant. Nova may be the successor for Dr M through employment, but it was not, on the facts, the successor for Dr K. Dr K's employer is University U. The assignment dated 1 August 2024 is after the PCT filing date and does not by itself show that Nova was the successor at the relevant date. The Rule 92bis correction changes the named applicant to Nova and University U, but the EPO will examine whether that correction reflects the true position at the filing date. If University U was the successor under national employment law and the correction is accepted, the applicant side may align with the priority applicants: Nova for Dr M and University U for Dr K. In that case priority can be valid for the whole disclosure, provided the other requirements are met. If the correction is not given retroactive effect, or if University U cannot prove succession, priority is invalid at least for subject-matter attributable to Dr K. The analysis must therefore be claim-by-claim, not all-or-nothing.

Nova should build a complete chain-of-title file before the EP regional phase. For Dr M, it needs the employment contract, the applicable employee-invention law, and any assignment or confirmation that rights in the provisional and the PCT application vested in Nova. For Dr K, it needs the employment contract with University U, the university's IP policy, and any assignment or legal provision showing that University U owned Dr K's rights at the PCT filing date. The 1 August 2024 assignment is useful but, on its own, it is late; Nova should explain why it nevertheless confirms the position at filing. Nova should also check whether the Rule 92bis correction was properly notified and whether the EPO has recorded it. At EP entry, Nova should file the correction documents, the priority document and any translation, and a clear statement of the chain of title. It should pay all fees and translations on time. If the EPO raises a priority objection, Nova should be ready to request a decision and, if necessary, to restrict the claims to subject-matter for which priority is valid. It should also preserve evidence of Dr K's contribution and the 15 December 2023 paper because those facts will drive the fallback position.

If priority is invalid for the subject-matter attributable to Dr K, that subject-matter has the PCT filing date of 9 January 2024 as its effective date. University U's paper was published on 15 December 2023, before that date, so it is prior art under Article 54(2) EPC. The paper is not excluded because University U is a co-applicant or because the authors are the inventors; the EPC has no general grace period. For novelty, you must compare the paper's disclosure with each claim. If the paper discloses Dr K's contribution and the claim includes that contribution as an essential feature, the claim lacks novelty. If the paper discloses only part of a combination and the claim requires an additional feature from Dr M's work that is not disclosed, the paper does not anticipate but can still be used for inventive step. The paper may also be relevant to sufficiency if it shows that the claimed effect was not achieved across the scope. If priority is valid for Dr K's subject-matter, the paper is after the priority date and is not prior art at all. Nova should therefore prepare two claim sets: one assuming priority is valid and one restricted to subject-matter for which priority is clearly valid.