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.

• Racket has given us the patent application number, so we do not have to wait until publication.
• We must wait until the patent application has been published to determine who has filed the application.

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.

• Since the applicant has its place of business in an EPC contracting state, we must start our proceedings in that state (Art. 2 PoR).
• Since the applicant has its place of business outside the EPC contracting states, and your residence/place of business is in an EPC contracting state, we must start proceedings in the latter state (Art. 3 PoR).
• Since the applicant made the invention and was your employee, we must first determine the state whose law determines the right to the European patent (Art. 60(1) EPC) and start the proceedings in that state (Art. 4 PoR).
• We must start our proceedings in the Federal Republic of Germany, since none of the above options apply (Art. 5(1) PoR).

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:

• We can only file a new European patent application, as the original application is no longer pending (G 3/92).
• We cannot prosecute the application as our own, as we are entitled to only part of the invention. We must file a new application in respect of our invention. Gullible will have to delete this part from their application (Guidelines C-VI 9.10).
• Since our application has an earlier date of filing than Gullible's application, we should request that his application be refused, as it makes no sense to continue with his application.
• We should prosecute the application as our own, since it has the earliest date of filing. Our own application on the subject matter should be withdrawn, since Gullible's application concerns the same subject matter and has an earlier date of filing and so is a novelty-destroying prior right for our application.

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.