1.2. European prior rights

Pursuant to Art. 54(3) EPC the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in Art. 54(2) EPC and which were published on or after that date, shall be considered as comprised in the state of the art.

As part of the 2000 revision of the EPC, former Art. 54(4) EPC 1973 was deleted, so that any European application falling under Art. 54(3) EPC constitutes prior art with effect for all the EPC contracting states at the time of its publication, eliminating the problems stemming from the 1997 fee reform (Revision of the European Patent Convention (EPC 2000), OJ SE 4/2007, 52).

The revised Art. 54(3) EPC is applicable to European patent applications filed on or after the time the EPC 2000 entered into force. The deleted Art. 54(4) EPC 1973 is still applicable to European patents already granted and applications pending at the time the EPC 2000 entered into force.

In T 1926/08, in order to establish novelty with respect to document D1, the patent proprietors had filed two sets of claims for different contracting states. The admissibility of a second set of claims had been objected to by the opponents. The patent at issue was granted before the date of entry into force of the EPC 2000.

The point of dispute was whether or not R. 87 EPC 1973 was a rule implementing Art. 54(4) EPC 1973 and consequently could be applied, or whether the situation was covered by Art. 123 and R. 138 EPC. Indeed R. 87 EPC 1973 allowed different claims, description and drawings for different states both in the case of an earlier European patent application which was part of the state of the art under Art. 54(3) and (4) EPC 1973 and when a prior national right existed, while R. 138 EPC 2000 only provided for the latter case.

The board pointed out that, as set out by the Legal Board of Appeal (J 3/06, OJ 2009, 170; J 10/07, OJ 2008, 567), a rule could affect different Articles. The clear purpose of R. 87 EPC 1973 was to take account of the situation where a conflicting application constituted prior art only for some and not for all designated states. It governed the procedure when this situation arose and thus was clearly linked to Art. 54(4) EPC 1973. A rule did not only implement an Article when it defined its substance in more detail, but also when it provided a procedure for enforcing the substance of the article. If one did not allow a separate set of claims, the patent proprietor would have to limit his patent for all designated states. This would mean that the conflicting application had effect for all designated states. This was the situation under the EPC 2000, which, however, in the case at issue was not yet applicable. Not providing a procedure for enforcing what was laid down in Art. 54(4) EPC 1973 ran counter to the legislator's intention because it would make Art. 54(4) EPC 1973 redundant. Thus R. 87 EPC 1973 was applicable and a separate set of claims was admissible.

In J 5/81 (OJ 1982, 155) the board held that a published European patent application became part of the state of the art under Art. 54(3) EPC 1973, with retroactive effect as from its filing date or priority date, for assessing applications filed after that filing date or priority date but prior to its publication, but that this should only apply if such a "prior application" was still in existence at the time of publication.

In T 447/92 the whole contents of an earlier document within the meaning of Art. 54(3) and (4) EPC 1973 had to be considered as forming part of the state of the art as far as novelty was concerned. The board pointed out that the boards of appeal had consistently applied a very restrictive interpretation of disclosure in order to reduce the risk of self-collision. To do otherwise would, in the board's view, undesirably undermine the exclusion from consideration of documents within the meaning of Art. 54(3) EPC 1973 when deciding whether there had been an inventive step under Art. 56, second sentence, EPC 1973.

In T 1496/11 the case at issue was a second appeal against the interlocutory decision of the opposition division on the basis of which the patent could have been maintained in amended form. In a first appeal the board had set aside the opposition division's decision to revoke the patent and had remitted the case to the department of first instance (T 1265/07).

The board found that the subject-matter of claim 1 was only entitled to the filing date of 8 October 1997. The divisional application G25 of the patent in suit (a late filed document) disclosed an embodiment identical to that provided in the priority document. This embodiment of the divisional application G25 was therefore entitled to the claimed priority date of 10 October 1996 and thereby anticipated the subject-matter of claim 1 which was only entitled to the filing date of 8 October 1997. The board noted that these new facts were not addressed in the earlier decision of the board and accordingly there was no case of res judicata (e.g. T 27/94; T 378/88). For these reasons, the late filed document, i.e. divisional application G25 was prima facie relevant and the board exercised its discretion to introduce it into the proceedings. Hence, the subject-matter of claim 1 lacked novelty with respect to the divisional application G25 under Art. 54(3) EPC.

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