T 0116/18 - (I) Prior rights under Art.54(3) EPC 1973

 Key points

• This decision T 0116/18 also includes referral G 2/21 about plausibility, but let's discuss another point first.
• “The patent in suit originates from European patent application No. 12002626.5 which is a divisional application of European patent application No. 05719327.8”; the parent was a Euro-PCT application
• So the present divisional application was "filed" in 2012 and has the filing date of the parent in 2005; the parent having an international filing date in February 2005.
• “D8 [WO 2005/048711 A1] was published on 2 June 2005 and thus after the filing date of the patent in suit (21 February 2005). Compared to the European patent application/the European patent (published as EP 1 686 857) emanating from D8, the patent in suit additionally designates IS and LT. ”
• The question is whether Article 54(3) EPC 2000 applies for the present application (designated states irrelevant) or whether Article 54(3) and (4) EPC 1973 applies (prior right effect only for designated states of the earlier application). The cut-off date under the transitional provisions is 13.12.2007 but is the filing date (in 2005) decisive or the date of receipt of the divisional application (2012)?
• The best legal basis we had, as of yet and as far as I know, is the document "Implementation of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000" (in English only) now (again) available on the EPO website, which says that “Note in this context, that for European divisional applications the relevant date, for Art. 54(4) and Rule 23a EPC 1973 to apply or not, is the date of receipt of the divisional application at the EPO and not the attributed filing date of the parent application. This means that under the EPC 2000, parent and divisional applications may be treated differently as regards the application of Art. 54(3) EPC.” (para. 10.1). (underlining added)
• The legal status of that document is not entirely clear to me.
• The present Board decides that D8 is “not prior art for the set of claims for the contracting states IS and LT ”, i.e. Art. 54(4) EPC 1973 applies ("Paragraph 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.).
• So the above-cited para. 10.1 is incorrect and the filing date of the parent is decisive.
• The Board refers to: “see the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, Article 1, No 1 in connection with Article 54(4) EPC 1973, Article 158(1) and (2) EPC 1973, and Rule 107(1)(d) EPC 1973”
• See for the details that the parent was a Euro-PCT application and the effect on Article 54(4) EPC 1973, this post.
• The patent was granted with two sets of claims, one for IS and LT and one for the other designated states, as permitted under Rule 87 EPC 1973. 

T 0116/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180116ex1.html

Summary of Facts and Submissions

I. This decision concerns the appeal filed by the opponent (appellant) against the decision of the opposition division (decision under appeal) to reject the opposition against European patent No. 2 484 209 (patent in suit).

The patent in suit originates from European patent application No. 12002626.5, which is a divisional application of European patent application No. 05719327.8.

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Reasons for the Decision

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10.1 Novelty objection based on D8

10.1.1 D8 [WO 2005/048711 A1] was published on 2 June 2005 and thus after the filing date of the patent in suit (21 February 2005). Compared to the European patent application/the European patent (published as EP 1 686 857) emanating from D8, the patent in suit additionally designates IS and LT. Therefore, D8 is:

- not prior art for the set of claims for the contracting states IS and LT (see the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, Article 1, No 1 in connection with Article 54(4) EPC 1973, Article 158(1) and (2) EPC 1973, and Rule 107(1)(d) EPC 1973)

- prior art pursuant to Article 54(3) EPC for the set of claims for the contracting states AT, BE, CH, DE, DK, ES, FR, GB, GR, IT, LI, LU, MC, NL and SE (see, however, point 10.1.4 below)