No more "prior claims" approach in Europe / updated answer to Exam-Related Question

One of the things that has changed in the new National Law table is in table VII with respect to conversion.
A couple of the exceptions (always nice for EQE questions) are now gone.

Prior to July 2008, there was an exception in Switzerland and Liechtenstein where a withdrawal or rejection on the basis of earlier EP right [Art.54(3) EPC] opened the possibility of a conversion to a national application in those states [see National Law EPC, Table VII, column 1]. Reason for this was the “prior claim approach” in Switzerland and Liechtenstein. However, with the amendment to their national law in July 2008, Switzerland & Lichtenstein now apply the “whole contents” approach for prior rights.

The other one is for Italy - they used to allow a fairly broad conversion to an Italian utility model. This is no longer possible. 

For those using our Exam-Related Questions, click below to see the new answer for one of the questions.




I/J-06 (3 points)
Can the applicant of a European patent application refused by the EPO for lack of novelty under Art.54(3) EPC validly ask for conversion into national applications? If so, give examples.

Answer
Art.135(1)(b) EPC. Generally no.
o Poland [PL] allows conversion when a European patent application is withdrawn or refused [see National Law EPC, Table VII, column 1].
o Slovakia [SK] allows conversion when a European patent application is withdrawn or deemed to be withdrawn, refused, or the European patent is revoked [see National Law EPC, Table VII, column 1 and 5].

Comment
o Prior to July 2008, there was an exception in Switzerland and Liechtenstein where a withdrawal or rejection on the basis of earlier EP right [Art.54(3) EPC] opened the possibility of a conversion to a national application in those states [see National Law EPC, Table VII, column 1]. Reason for this was the “prior claim approach” in Switzerland and Liechtenstein. However, with the amendment to their national law in July 2008, Switzerland & Lichtenstein now apply the “whole contents” approach.