T 1698/09 – Prior Rights Ain’t Prior Art

The wording of A 54(3) appears to be pretty straightforward, but the creativity of parties to opposition proceedings is not to be underestimated, as the present decision shows.

The opponent appealed against the decision of the Opposition Division to reject its opposition.

The opposed patent had been filed on December 5, 2002 and claimed a German priority filed on December 13, 2001 (“D10”).

The opponent pointed out that the claimed subject-matter was not novel over German utility model (Gebrauchsmuster) DE 201 20 040, filed on December 7, 2001 and published on April 10, 2003. This document was referred to as D9.

*** Translation of the German original ***

[2.2.1] D9, which was filed by the [opponent] only during the oral proceedings, and, therefore, belatedly, is a German utility model. Its day of recordation (Eintragungstag), i.e. the day on which it was made available to the public, is December 10, 2003. Therefore, it does not constitute state of the art within the meaning of A 54(2) for the opposed patent, even if the latter could only benefit of its filing date of December 5, 2002 and not of its priority date of December 13, 2001.

[2.2.2] The [opponent] also pointed out that D9 had been filed on December 7, 2001, which date was prior to the priority dated, and that it had been made available to the public after the priority date and the filing date of the opposed patent, respectively. Therefore, it had to be considered as state of the art under A 54(3) because Germany was one of the states that was designated by the opposed patent.

Irrespective of the question how an inadmissible ground for opposition, i.e. lack of novelty pursuant to A 54(3), would have to be examined – in application of the principles laid down in G 7/95 – in view of lack of inventive step, the following is to be observed:

According to A 54(3), the content of European patent applications, the dates of filing of which are prior to the effective date (Zeitrang) of the opposed patent and which were published only after that date, are to be considered as comprised in the state of the art. A German utility model is not a patent application, nor is it a European patent application. The fact that Germany was designated in the opposed patent cannot alter that fact.

[2.2.3] The discussion of D10, which has been mentioned by the [opponent] in connection with D9, and which is the priority document of the opposed patent, is, therefore, irrelevant.

[2.2.4] For the above mentioned reasons the Board decides to exercise its discretion pursuant to A 114(2) and not to take into account D9 and D10.

To read the whole decision (in German), click here.

The file wrapper can be found here.