T 1926/08 – Looking Back

The possibility of having different claims for different designated states is nowadays governed by R 138. As a matter of fact, this provision has undergone some change when the EPC 2000 entered into force. Here is a comparison between R 138 EPC 2000 and R 87 EPC 1973:

This change became necessary because under the EPC 2000, prior art under A 54(3) is novelty destroying for all contracting states, irrespective of which states were designated in the prior art, which was not the case under the EPC 1973.

In the present case the question arose of whether R 87 EPC 1973 was applicable or not.

The patent was based on a European patent application filed on September 18, 1998 and claimed the priority of an Italian application filed on October 3, 1997. The designation fees were validly paid for the contracting states BE, CH, DE, DK, ES, FR, GB, LI, LU, NL. The mention of the grant of the patent was published on November 16, 2005.

One of the relevant documents of the prior art, D1, was a European patent application published on January 27, 1999 and claiming the priority of a German application filed on July 23, 1997. The designation fees were validly paid for the contracting states BE, DE, ES, FR, GB, IT, NL, SE.

The opponents filed an appeal after the Opposition Division had decided to maintain the patent in amended form. The decision under appeal was based on a request including a first set of claims for the contracting states BE, DE, ES, FR, GB, NL and a second set of claims for the contracting states CH, DK, LI, LU.

With their statement setting out the grounds of appeal, one of the opponents submitted questions of law to be referred to the Enlarged Board of Appeal (EBA).

(1) Do amendments of a European patent, which have been requested after entry into force of EPC 2000, have to comply under application of A 123(1) EPC 2000 with all the requirements of the Implementing Regulation to EPC 2000, in particular also of R 138 EPC 2000?

(2) Which point in time is decisive for the question, whether A 123(1) EPC 2000 is to be applied to a request for amendment of a European patent which has been granted before entry into force of EPC 2000?

a) the time at which the decision on admissibility of the amendment is taken,

b) the time at which the request, which is the object of the decision, was submitted, or

c) the time at which the amendment was requested for the first time during the proceedings?

Here is what the Board had to say on this topic:

[3] D1 is a European patent application with a validly claimed priority date (its priority document is identical to the application as filed) which is prior to the priority date of the patent in suit and a publication date which is after the filing date of the patent in suit. It belongs therefore to the state of the art under A 54(3).

[3.1] The present patent was granted before the date of entry into force of the EPC 2000. By virtue of Article 1 of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No.1 of OJ EPO 2007, 197), A 54(4) EPC 1973 still applies.

[3.2] According to R 23a EPC 1973, which is an implementing regulation of A 54(4) EPC 1973, D1 is only state of the art with respect to novelty for the common contracting states for which the designation fees have been validly paid (BE, DE, ES, FR, GB, NL). In order to establish novelty with respect to document D1 the patent proprietors filed a first set of claims for these states and a second set for the further contracting states designated in the patent in suit (CH, DK, LI, LU). Since the admissibility of a second set of claims has been objected to by the opponents, the legal framework relating to the possibility of filing different claims, description and drawings for different states needs to be analysed.

[3.3] Article 2, first sentence, of the Administrative Council’s decision of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (Special edition No.1 of OJ EPO 2007, 89) reads: “The Implementing Regulations to the EPC 2000 shall apply to all European patent applications, European patents, ..., in so far as the foregoing are subject to the provisions of the EPC 2000.”

[3.4] In decision J 10/07 [1.3] the Legal Board of Appeal (LBA) stated that this can only mean that a Rule of the Implementing Regulations to the EPC 2000 is to be applied where, or in so far as, the European patent application in question is subject to the Article of the EPC 2000 to which that Rule relates and which is specified and supplemented by it. Otherwise, irresoluble contradictions and legal discrepancies would arise between the applicable Articles of the EPC 1973 and the applicable provisions of the Implementing Regulations to the EPC 2000, which cannot have been the legislator’s intention.

[3.5] In J 3/06 [3] the LBA stated further that in an assessment of which Article relates to a particular Rule, it should be noted that a Rule in the Implementing Regulations can affect different EPC Articles in very different ways. Within the meaning of the provision, a Rule does not apply to an Article purely by virtue of mentioning that Article. However, a Rule in the Implementing Regulations can be assumed to apply to a particular EPC 2000 Article when it puts a more detailed construction on that Article, in keeping with the purpose of “implementing” the EPC.

[3.6] According to Article 7 of the Act revising the EPC (Special edition No.1 of OJ EPO 2007, 196) in connection with the Administrative Council’s decision of 28 June 2001 on the transitional provisions (supra), A 54(4) EPC 1973 shall continue to apply to European patents granted before 13 December 2007, while A 123 EPC 2000 is applicable to patents granted before that date. This has not been contested. The point of dispute rather is whether or not R 87 EPC 1973 is a Rule implementing A 54(4) EPC 1973 and consequently could be applied, or whether the situation is covered by A 123 and R 138 EPC. Indeed R 87 EPC 1973 allows different claims, description and drawings for different states both in the case of an earlier European patent application which is part of the state of the art under Article 54(3) and (4) EPC 1973 and when a prior national right exists, while R 138 EPC 2000 foresees only the latter case.

[3.7] As set out by the LBA, a Rule can affect different Articles and this Board does not deny that R 87 EPC 1973 also affects A 123 EPC. However the clear purpose of R 87 EPC 1973 is to take account of the situation that a conflicting application constitutes prior art only for some and not for all designated states. It governs the procedure when this situation arises and thus is clearly linked to A 54(4) EPC 1973. A Rule does not only implement an Article when it defines its substance in more detail, like R 23a EPC 1973 does by setting up a condition for the territorial scope of the conflicting application, but also when it provides a procedure to enforce the substance of the Article.

[3.8] If one did not allow a separate set of claims, the patent proprietor would have to limit his patent for all designated states. This would mean that the conflicting application had effect for all designated states. This is the situation under the EPC 2000 which, however, in the present case is not yet applicable. Not providing a procedure to enforce what is laid down in A 54(4) EPC 1973 is in contradiction to the legislator’s intention because it would make A 54(4) EPC 1973 redundant.

Thus R 87 EPC 1973 is applicable and a separate set of claims for the contracting states CH, DK, LI and LU is admissible.

Referral to the EBA

[4] According to A 112(1)(a) EPC 1973 EPC the Board of Appeal shall refer a point of law to the EBA in order to ensure uniform application of the law or if a point of law of fundamental importance arises and if it considers that a decision of the EBA is required.

[4.1] [Opponents 1] seem to suggest that coming to the conclusion that R 87 EPC 1973 was a Rule implementing A 54(4) EPC 1973 instead of A 123 EPC was contradictory to the jurisprudence of the LBA in J 3/06. The Board does not see such a contradiction. In J 3/06 the LBA clearly said that a Rule can affect different EPC Articles and that a Rule can be assumed to apply to a particular Article when it puts a more detailed construction on that Article, in keeping with the purpose of “implementing” the EPC. The present Board followed this line and came to the conclusion that the purpose of R 87 EPC 1973 is to provide a procedure for the situation underlying A 54(4) EPC 1973 and thus implements this Article. Furthermore, from this it follows that the questions [opponents 1] wanted to have referred to the EBA are irrelevant because they concern A 123 EPC which does not play a role for answering the relevant question of whether or not a separate set of claims is admissible.

[4.2] For these reasons, the Board does not consider that a decision of the EBA is required.

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