What to do if you have a better right (Art. 61 EPC)

A person other than the applicant for a European patent may be entitled to the grant of that patent. This person can use the procedure of Art. 61 EPC to prosecute the application as his own, to file a new European patent application for the same invention (with the same date as the old one) or to request that the application be refused.

First safeguard our rights

The first thing we should do is file our own European patent application concerning the "stolen" subject matter. This way, if it turns out that Mr. Racket did not in fact file his own patent application, your rights regarding the subject matter are protected.

We should file our own application within six months from 28 March 2002 so that the abusive disclosure by Mr. Racket does not prejudice the novelty of the invention (Art. 55(1)(b) EPC). We should not first file a priority application and then a year later a European application, because the 6-month period of Art. 55(1)(b) EPC is computed from the actual filing date of the European application (G 3/98).

Our national German application constitutes a national prior right which we can use in national proceedings in Germany to invalidate Racket's European patent there, should it be granted.

We must monitor the publication of patent applications to see whether Mr. Racket did in fact file his own patent application.

Although we know Mr. Racket did in fact file his own patent application, we must monitor the publication of patent applications to see whether Mr. Racket also filed any divisionals.

Then try to negotiate

After filing the application, we should approach Gullible Inc. to discuss the situation. They are an honorable company, so it is likely that they are willing to transfer all rights to the invention to us or work out some other mutually satisfactory solution.

If talks fail, start entitlement proceedings

In the unfortunate case that negotiations prove unsuccessful, we can institute entitlement proceedings against the applicant (Racket) to claim our rights concerning this invention.

Where to start entitlement proceedings

As there is no contract between us and the applicant that determines jurisdiction, we must determine the appropriate jurisdiction to start entitlement proceedings according to the Protocol on Recognition.

What to do at the EPO

We then submit proof to the EPO that we have started these proceedings and ask for a stay of the grant proceedings (Art. 61, Rule 13(1) EPC). The application now cannot be withdrawn anymore (Rule 14 EPC). However, we must check at the EPO's register that any renewal fees are paid in time, and if necessary pay them ourselves on the last day of valid payment (Rule 13(5) EPC). which is on dd/mm/yyyy in this case. We can do this because any person may pay fees (LA 6/91). If before publication, we must also pay the filing fee, search fee and any claim fees to keep the application alive.

After our victory in the court

The final decision by the court of X will be recognized in all EPC contracting states (Art. 9 PoR). We must send the decision to the EPO (Rule 13(2) EPC) and ask to [pick one and motivate] (Art. 61(1) EPC)

  1. prosecute the application as our own application in place of the applicant,
  2. file a new European patent application in respect of the same invention, or
  3. request that the application be refused.

Some possible motivations:

Our new application will be treated as a divisional application (Art. 61(2) EPC). However, we do not need to pay any renewal fees for our new application (Art. 86(1), Rule 37(4) EPC, Guidelines A-IV 2.7.2).

Our new application can only designate those states designated in Racket's original, not any states that acceded after Racket's application was filed. However we can designate the states that Mr. Racket did not pay designation fees for.