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Case Law of the Boards of Appeal

 
 
3.10. Entry into force of a decision to grant a European patent

Under Art. 97(3) EPC (former Art. 97(4) EPC 1973) the decision to grant a European patent shall take effect on the date on which the mention of the grant is published in the European Patent Bulletin. New Art. 97(3) EPC is essentially identical to Art. 97(4), first sentence, EPC 1973. The provisions concerning the minimum period that must lapse before the grant can take effect have been deleted from the Article. With the other grant formalities being transferred to the Implementing Regulations (see R. 71 EPC), this matter too was more appropriately regulated at a lower legislative level. Consequently, Art. 97(6) EPC 1973 was deleted as unnecessary.

Under the EPC 2000, Art. 98 EPC stipulates that the European Patent Office shall publish the specification of the European patent as soon as possible after the mention of the grant of the European patent has been published in the European Patent Bulletin. The contents of the specification are transferred to the Implementing Regulations (see R. 73(1) EPC). Art. 98 EPC now contains the words "as soon as possible" in order to indicate that it is not always technically possible to publish the specification on the same day as the mention of the grant.

In J 7/96 (OJ 1999, 443) the board did not share the view of the department of first instance and the applicant that the proceedings for grant were concluded on the date the examining division reaches its decision to grant a European patent under Art. 97(2) EPC 1973. The board noted that it was true that this date represented the date on which the process of reaching a decision on the application within the examining division was concluded; both the EPO and the applicant were bound by the decision as far as the text of the patent to be granted, the claims, description and drawings were concerned, and the subject­matter of the text of the patent became res judicata at that date. Thereafter, the EPO could no longer amend its decision and had to disregard any fresh matter the parties might submit (see G 12/91, OJ 1994, 285). Only linguistic errors, errors of transcription and obvious mistakes could be corrected later under R. 89 EPC 1973. The date on which the decision to grant the European patent was reached was thus clearly decisive as regards the EPO and the applicant.

The board noted that under Art. 97(4) EPC 1973, the decision to grant a European patent referred to in Art. 97(2) EPC 1973 does not take effect until the date on which the European Patent Bulletin mentions the grant. It is from this date of mention that, in accordance with Art. 64(1) EPC 1973, a European patent confers on its proprietor the same rights in respect of each Contracting State in respect of which it is granted as would be conferred by a national patent granted in that State. The mention also marks the time when the responsibility of the EPO comes to an end and the national patent systems take over, the granted patent becoming a bundle of national patents. It also marks the start of the period during which a notice of opposition may be filed (Art. 99(1) EPC 1973). Thus, the date of publication of the mention of the grant of the patent is the date on which the grant of the patent takes legal effect with respect to third parties, and on which the extent of protection conferred on the applicant is determined once and for all by means of the accompanying publication of the specification of the patent pursuant to Art. 98 EPC 1973. During the period between the decision to grant the patent (Art. 97(2) EPC 1973) and the publication of the mention of the grant (Art. 97(4) EPC 1973), the application is deemed to be still pending before the EPO. As the department of first instance itself admits in its decision, and as is also not disputed by the applicant, according to established EPO practice it is still possible during this interim period to take some limited action in respect of the application, which may, for example, be withdrawn or transferred. Applicants may even withdraw individual designations if they so wish. For its part, the EPO continues to have certain rights or obligations concerning the patent during this period; for example, the annual fees fall due and transfers of rights in the patent must be registered by the EPO.

In J 23/03 the appellant requested that the designation country GR incorrectly marked with a cross be corrected to GB. After a considerable exchange of correspondence, the examining division refused the request for correction on the ground that, from the date of publication of the patent, public interest in the reliability of the published information overrode the patent proprietor's interest in a correction, especially as he had had several opportunities to check the designation information in the course of the proceedings, namely after the notification of forms 2004 and 2005.

The board stated that R. 88 EPC 1973 did not contain an explicit reference to a time limit and that a request for correction could therefore be submitted at any stage of the patent grant procedure (see also J 6/02). This also applied to the correction of incorrect designation information in the application documents as requested by the appellant. The board nevertheless found that the appellant's request for correction of the designation information in the application documents had been submitted to the EPO only on 29.4.2002. Mention of the grant of his patent had appeared in the Patent Bulletin over a month before that date. Under Art. 97(4) EPC 1973, mention of the patent grant led to the grant of the patent taking effect and to the patent grant proceedings being concluded. At the time that the appellant submitted his request for correction, therefore, the proceedings were no longer pending (see J 7/96, OJ 1999, 433 and J 42/92).

The board held that the pendency of patent grant proceedings was, however, a requirement for the submission of an admissible request for correction because after that date the bundle of European patents granted under a single system divides into national patents which are then no longer administered by the EPO but by the appropriate national offices.