2.3. Non-applicability of Article 105(1)(a) EPC

In T 1196/08 an assumed infringer intervened under Art. 105(1)(a) EPC and claimed that the Romanian patent resulting from the extension of a European patent had to be seen as a European patent granted under the EPC. The board did not agree. The term "the same patent" in Art. 105(1)(a) EPC meant a European patent within the meaning of Art. 2(1) EPC 1973. While there were certain parallels between the extension system and the European patent system, fundamental differences still existed. 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. 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 Romanian extension ordinance did not refer to Art. 105 EPC. The references in the Romanian extension ordinance to the provisions of the EPC being exhaustive, there could be no question of applying Art. 105 EPC by analogy.

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