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Case Law of the Boards of Appeal

3.3. Parallels and differences between the extension system and the European patent system

In T 1196/08, SC contended, in support of its notice of intervention under Art. 105(1)(a) EPC, that the Romanian patent resulting from the extension of a European patent had to be seen as the same as a European patent granted under the EPC.

The board did not agree. As used in Art. 105(1)(a) EPC, the term "the same patent" meant a European patent within the meaning of Art. 2(1) EPC 1973. The board explained that, although the extension procedure largely corresponded to the EPC system operating in the EPC contracting states, its legal force derived not from direct application of the EPC but solely from national law modelled on the EPC. While there were certain parallels between the extension system and the European patent system, fundamental differences still existed between the two. The extension system, including all the conditions and legal effects of extension, was based exclusively on the application of national law unless express reference was made to the EPC. By contrast, the European patent system and the effects of a European patent in the contracting states relied solely on the direct application of the EPC, even if certain provisions of the EPC referred to national law. According to the board, the extension of a European patent under the national law of the extension state meant that the European patent had the effect of a national patent, while designation under Art. 79 EPC 1973 meant that the patent was granted by the EPO on the basis of the EPC and with effect for the designated contracting state. In view of this different legal situation, the board concluded that a patent extended to the territory of an extension state was not a European patent within the meaning of Art. 2(1) EPC 1973. Furthermore, the provisions of the Romanian extension ordinance did not refer to the provisions of Art. 105 EPC. The references in the Romanian extension ordinance to the provisions of the EPC being exhaustive, there could be no question of application of Art. 105 EPC by analogy.