4.2
Different text in respect of the state of the art according to Art. 54(3) and Art. 54(4) under EPC 1973

If the EPO notes that in respect of one or more of the designated Contracting States the content of an earlier European patent application forms part of the state of the art pursuant to Art. 54(3), two situations could arise:

(i)
the filing date of the application under examination was pending or the patent under examination is beforehad already been granted at the date of entry into force of the EPC 2000. Art. 54(4) EPC 1973 is still transitionally applicable (see Art. 1, Decision of the Administrative Council of 28 June 2001, OJ EPO 2003 Special edition No. 1, 202). Here, if conflicting prior art gives rise to different texts of the claims for different Contracting States, different sets ofsets of claims for the Contracting States concerned may be filed.
(ii)
the filing date of the application under examination was not pending or the patent under examination is on or afterhad not yet been granted at the date of entry into force of the EPC 2000. As Art. 54(4) EPC 1973 has been deleted, the conflicting prior art belongs to the state of the art for all Contracting States, irrespective of the effected designations (see also F‑II, 4.3). Likewise, it is irrelevant if the designation fee(s) for the earlier European patent application has/have been paid, since there is no provision in the EPC 2000 corresponding to Rule 23a EPC 1973. Consequently, the possibility of having different texts for different Contracting States on the basis of Art. 54(3) no longer exists.
The above applies mutatis mutandis in opposition proceedings.
4.2.1
Art. 54(3) and (4) EPC 1973 in opposition proceedings

The substance of H‑III, 4.2, applies mutatis mutandis in opposition proceedings. The transitional provisions to the EPC 2000 require that, if the underlying application for a patent was filed before the date of entry into force of the EPC 2000, the conflicting prior art under Art. 54 be treated in accordance with EPC 1973, e.g. taking into account Art. 54(3) and Art. 54(4) of EPC 1973 with the system of common designations. However for patents for which the underlying application was filed on or after the date of entry into force of the EPC 2000, the provisions of the latter apply, in which the system of common designations for conflicting prior art under Art. 54(3) no longer exists. Accordingly, different texts for different states are not acceptable any more for such patents (see F‑II, 4.3 and H‑III, 4.2).

Rule 138

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