T. Applications by non-entitled persons

Article 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. For further details, see R. 16 and 17 EPC. See also R. 14(1) EPC in chapter III.M.3 for stay of proceedings before the EPO in case of entitlement suit.

In G 3/92 (OJ 1994, 607), the Enlarged Board was called upon to consider the application of Art. 61(1)(b) EPC 1973 (Art. 61 EPC left unchanged in substance by the EPC 2000 revision) in the following circumstances: 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 This prior application had been published, and in 1986 deemed to be withdrawn for non-payment of the examination fee.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 1973 in 1990.

The referring Legal Board took the view in its interlocutory decision J 1/91 date: 1992-03-31 (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 EPC, that being a matter to be dealt with by the EPO under Art. 61 EPC 1973.

The Enlarged Board 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 therefore ruled in J 1/91 of 25 August 1994 date: 1994-08-25 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.

In J 1/23 the Legal Board disagreed with the appellant’s assertion that the national court’s decision did not qualify as a decision adjudging that the third party was entitled to half of the European patent application within the meaning of Art. 61 EPC. Although it was undisputed that the national court decision was a final decision, the appellant contended that the national court could not decide on entitlement to the application because a passage referring to the “patent applications” had been removed from the third party’s request in the national (appeal) proceedings. According to the Legal Board, the key question was whether, in the particular case, the EPO interpreted the decision as a final entitlement decision within the meaning of Art. 61 EPC. In the case in hand, even in the absence of an explicit reference to "all patent applications and patents that may be issued thereof", the entitlement to the invention as specified in the application inherently implied entitlement to the grant of a European patent based on the application (see also in chapter IV.A.4).