4.2 Different text in respect of the state of the art according to Art. 54(3) EPC and Art. 54(4) EPC 1973

If the EPO notes that in respect of one or more of the designated contracting states the content of an earlier European patent application forms part of the state of the art pursuant to Art. 54(3), two situations can arise:

(i)the application under examination was pending at the date of entry into force of the EPC 2000 (13 December 2007), or the patent under examination had already been granted at that date. Art. 54(4) EPC 1973 is still transitionally applicable (see Art. 1 of the 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. Here, if conflicting prior art gives rise to different texts of the claims for different contracting states and if the relevant designation fee(s) for the earlier European patent application has/have been paid, different sets of claims for the contracting states concerned may be filed, if required to establish novelty over that prior art. In opposition proceedings, Rule 80 also applies to amendments occasioned by the state of the art according to Art. 54(4) EPC 1973.

(ii)the application or patent under examination is not one of those covered under (i). As Art. 54(4) EPC 1973 has been deleted, the conflicting prior art belongs to the state of the art for all contracting states, irrespective of the effected designations (see also F‑II, 4.3). Likewise, it is irrelevant if the designation fee(s) for the earlier European patent application has/have been paid, since there is no provision in the EPC 2000 corresponding to Rule 23a EPC 1973. Consequently, the possibility of having different texts for different contracting states on the basis of Art. 54(3) no longer exists.