T 2333/15 - Common designated states

Key points

• In this opposition appeal, the Board applies Article 54(4) EPC 1973.
• "D1 [EP1286125] constitutes prior art relevant for the common designated contracting states for which the designation fees have been validly paid, i.e. Germany and France (see Articles 153(2)(5) and 54(3) EPC and Article 54(4) EPC 1973, Rule 159(1) EPC)." 
• Just as a refresher: the present patent has filing date 15.11.2002, so Article 54(4) EPC 1973 continues to apply. The designation fees were paid for CZ, DE and FR only in 2004 upon entry into the European phase and the opposed patent was granted for those 3 states. Grant was in 2011. 
• For D1, the designation fees were paid only for DE and FR upon entry into the European phase.
• The application of Article 54(4) EPC 1973 to Euro-PCT applications appears not trivial. Or put otherwise, for Euro-PCT applications, the "common designated states" rule is not in actually Article 54(4) EPC 1973 but in Article 158(1) EPC 1973, second sentence, and Article 158(2) EPC 1973.
• Article 54(4) EPC 1973 specifies that Article 54(3) "shall be applied only in so far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published". However, the WO publication takes the place of the publication of a European patent application (Article 158(1) EPC 1973), so in principle the designated states in the WO publication are relevant. The designated states in the WO publication do not depend on the designation fees paid to the EPO (but on the designation fees as then paid during the international phase). Hence, Article 54(4) EPC 1973 does not actually give the "common designated states" rule as far as EPO designation fees are concerned.
• The second sentence of Article 158(1) provides the PCT application only forms a prior right under Article 54(3) EPC if the requirements of Article 158(2) EPC 1973 are met. This is the same under EPC 2000, but there is a twist. Article 158(2) EPC 1973 specifies as requirements for the prior right effect the filing of the translation and the payment of the national fee. This is the same as under EPC 2000. However, the definition of 'national fee' is different under EPC 1973. 
• Rule 106 EPC 1973 provides that the national fee consists of the basic fee (equal to the filing fee) and the designation fees. This provision was earlier in Rule 104b(1)(b)(ii) EPC 1973 (can be found e.g. the 7th edition, p.356). The designation fees could be paid per designated state under EPC 1973. 
• Therefore, the requirement of Article 158(2) EPC 1973 could be carried out for all EPC states designated in the WO publication, but also for only some but not all of those states. This is a difference with current Rule 165 EPC 2000 according to which only the filing fee needs to be paid for a Euro-PCT application for form a prior right under Article 54(3) EPC (in addition to the filing of the translation).
• T 0404/93 confirmed that "however, when that application entered the European phase, designation fees were not paid for IT, NL and SE, so that WO 89/01247 does not belong to the prior art according to Article 54(3) EPC for IT, NL and SE (c.f. Article 158, paragraphs (1) and (2) EPC and Rule 104b(1)(b)(ii) EPC [1973])." Note that Article 54(4) EPC 1973 is indeed not cited here.
•  Rule 23a EPC 1973 also continues to apply in connection with Article 54(4) EPC 1973 but is only relevant for (direct) European applications (GL B-VI 4.1.1.)
• I am not sure if the Board in the present decision applies Rule 106 EPC 1973 where it says refers to "for which the designation fees have been validly paid". I also leave it to the interested reader to find the legal basis for the relevant transitional provision for Article 158 EPC 1973 or Rule 106 EPC 1973  to be applicable. In the case at issue, CZ was not designated state in the PCT publication of D1 either (WO 02/088619) so strictly speaking Rule 106 EPC 1973 is not necessary for the case at issue. 
• The patentee could have submitted different claims for CZ on the one hand and DE and FR on the other hand (Rule 87 EPC 1973; GL H-III 4.2 under item I. I note that the Guidelines H-III 4.2 are inaccurate where they suggest that "the patent under examination had already been granted" on 13.12.2007, clearly also later granted patents resulting from applications pending at 12.12.2007 benefit from Rule 87 EPC 1973 as correctly stated in D-VII, 8.). note 06.11.2019: corrected that this applies to applications pending on 12.12.2007, i.e. the day before entry into force of EPC 2000.

EPO T 2333/15 - link (02781779.0)

Reasons for the Decision

1. Applicable provisions of the EPC

1.1 The patent is based on an International application which was filed under the PCT on 15 November 2002 and was still pending at the time of entry into force of the EPC 2000 on 13 December 2007.

1.2 According to Articles 1(1) and 6, first sentence 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. 4, OJ EPO 2007, 217), Articles 56, 84, 100 und 114 EPC 1973 as well as Articles 52, 54, 123 and 153 EPC (2000) apply. With respect to potentially colliding European applications pursuant to Article 54(3) EPC, however, the provisions of Article 54(4) EPC 1973 continue to apply. Since Rule 157(2) EPC is linked to Article 153 EPC, it is to be applied in the present case (by analogy with J 10/07, OJ EPO 2008, 567).

[...]

3. Main request - Novelty in light of D1

3.1 D1 [EP1286125] constitutes prior art relevant for the common designated contracting states for which the designation fees have been validly paid, i.e. Germany and France (see Articles 153(2)(5) and 54(3) EPC and Article 54(4) EPC 1973, Rule 159(1) EPC).

3.2 D1 discloses in figure 1 [...]

3.5 Thus, the Board agrees with the opposition division that the subject-matter of claim 1 as granted lacks novelty in light of D1, and this applies to the contracting states Germany and France (Articles 52(1) and 54(3) EPC and Article 54(4) EPC 1973).

[...]

For these reasons it is decided that:

1. The appeal of the opponent is dismissed.

2. The decision under appeal is set aside.

3. The case is remitted to the opposition division with the order to maintain the patent as amended in the following version:

- claims 1 to 7 filed as auxiliary request 2 with letter dated 29 February 2016;