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Unity of the European patent

· EPC,Unity,prior art

Company A based in Malta develops alarm systems for cars. The "Goldilock" alarm system was jointly developed with German car company B. It was agreed to file a European patent application naming A as applicant for Malta and B as applicant for the other states. The patent granted on the basis of said application is validly opposed by B's competitor C on the grounds of Article 100 (a) EPC. A wants to limit the subject-matter of claim 1 with respect to the cited prior art, B refuses this.

Can A and B separately pursue different sets of claims in the opposition proceedings?

Would you answer be different knowing that the EP application filed by A & B was filed on October 10, 2007 and that the relevant prior art is an EP application filed on January 15, 2007 ?

Proposed reply

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Companies A and B are different proprietors in respect of different designated contracting states.

According to Art. 118 EPC nevertheless they shall be regarded as joint proprietors for the purposes of opposition proceedings before the European Patent Office.

The unity of the patent shall not be affected, in particular the text of the patent shall be the same for all designated contracting states. Hence the proprietors are forced to act in common.

Therefore, A and B cannot pursue separately different sets of claims, Guidelines H-III-4.

The EP application filed by A & B was filed prior to December 13, 2007, therefore Art. 54(4) EPC 1973 is still transitionally applicable (see Art. 1, Decision of the Administrative Council of 28 June 2001, OJ EPO 2003 Special edition No. 1, 202), with Rule 23a EPC 1973 and the first part of Rule 87 EPC 1973 as implementing regulations thereto.

The prior art EP application was filed on January 15, 2007, before Malta became an EPO member state. Therefore, said EP application does not designate Malta.

In such a case different sets of claims for the contracting states concerned (Malta) may be filed, if required to establish novelty over that prior art.

In opposition proceedings, Rule 80 applies to amendments occasioned by state of the art according to Art. 54(3)and Art. 54(4) EPC 1973.

This proposed reply is not a legal opinion and does not engage the responsibility of Cabinet Novitech and should not replace the consultation of a Patent Attorney.

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