4.4
Different text texts where national rights of earlier date exist
National rights of earlier date are not comprised in the state of the art (Art. 54) for the purposes of the EPO examination for patentability. Consequently, a specific search for national rights of earlier date is not made, although any documents found are mentioned in the search report (see B‑VI, 4.2). However, under Art. 139(2), national rights of earlier date can be invoked, after the grant of the European patent, in national proceedings as a ground for revocation. These rights represent exceptions to the uniformity of European substantive patent law. Where national rights exist, therefore, the applicant or proprietor has a legitimate interest in submitting separatedifferent claims to ensure that the patent granted will not be partly revoked in some contracting states (see Rule 80 and Rule 138). The filing of separatedifferent claims should, however, neither be required nor suggested.
If an applicant or proprietor produces evidence in examination/opposition proceedings of the existence of pertinent national rights of earlier date in a particular (designated) contracting state, it is appropriate to allow the submission of admit separate claims for the contracting state in question (see H‑II, 2.5 and H‑II, 2.6). The evidence must be in the form of a printed specification or, where applicable, a copy of the utility model or utility certificate or of the application for it (see Art. 140); this is necessary to prevent unjustified deviation from the unity of the European patent.
In opposition proceedings, a national right of earlier date is neither a ground for opposition nor a ground for revocation. Hence, it is not admissible for an opponent to introduce a national right of earlier date into opposition proceedings to support a novelty attack.
The effect of the national right of earlier date is determined by the relevant national provisions. The examinerexamining or opposition division does not have to decide whether the applicant or proprietor has, by means of separate claims, limited the scope of his application/patent to the extent required to overcome the effect of the national right (see G‑IV, 6). That is the responsibility of the applicant or proprietor.
The examinerexamining or opposition division must check that the separate claims do not contravene Art. 123(2) and Art. 123(3), and that they meet the other requirements of the EPC. The same applies to a separate description (see H-III, 4.1).
In contrast to European rights of earlier date, national rights of earlier date are not comprised in the state of the art, soMoreover, in general, there is no justification for a separate description. However, at a suitable point in the preamble to the description, preferably in a separate paragraph following the information pursuant to Rule 42(1)(a), a reference to this situation must be made, for example along the following lines:

"With reference to ... (e.g. earlier application No. ... in ...), the applicant has voluntarily limited the scope of the application /patent for... (contracting state) by submitting separate claims for this (these) state(s)."

Quick Navigation