Art. 61 EPC deals with the remedies available where a person other than the patent applicant is held by a national court to be the person entitled to the grant of a European patent. The Article remains unchanged in substance. The conditions contained in Art. 61(1) EPC 1973 have been transferred to the Implementing Regulations (see R. 16 EPC and R. 17 EPC).
The appellant had lodged a European patent application in 1988. The search report revealed the existence of a prior application filed in 1985 for substantially the same invention by a third party, to whom the appellant had revealed the invention in confidence in 1982. This prior application had been published, and in 1986 deemed to be withdrawn for non-payment of the examination fee. Thereupon the appellant claimed from the UK Patent Office Comptroller, and was granted, entitlement to a patent for the invention disclosed in the prior European application under Section 12(1) UK Patents Act 1977. The appellant was thus allowed under Section 12(6) UK Patents Act 1977 to file a new application in the UK to be treated as having the same filing dates as the prior European application. The appellant then filed a new European patent application in respect of the invention disclosed in the prior application under Art. 61(1)(b) EPC 1973in 1990.
The referring Legal Board of Appeal took the view in its interlocutory decision J 1/91 dated 31.3.1992 (OJ 1993, 281) that the Comptroller's decision was a final decision within the meaning of Art. 61 EPC 1973. However, whilst entitlement to a patent was a matter for national courts to decide, those courts had no power directly to provide a remedy under the Convention, that being a matter to be dealt with by the EPO under Art. 61 EPC 1973.
The referring board then went on to consider whether pendency was required under Art. 61 EPC 1973. As the article was open to differing interpretations, the board decided to refer the question to the Enlarged Board.
The Enlarged Board of Appeal held that when it has been adjudged by a final decision of a national court that a person other than the applicant is entitled to the grant of a European patent, and that person, in compliance with the specific requirements of Art. 61(1) EPC 1973, files a new European patent application in respect of the same invention under Art. 61(1)(b) EPC 1973, it is not a pre-condition for the application to be accepted that the earlier original usurping application is still pending before the EPO at the time the new application is filed.
The Legal Board of Appeal therefore ruled in J 1/91 dated 24.8.1994 that the conditions of Art. 61(1)(b) EPC 1973 had been met and accordingly remitted the patent application to the Receiving Section for further prosecution.