Friday, 15 July 2016

T 1272/10 Continuing opposition appeal proceedings after lapse of the patent?

If in opposition proceedings the patent turns out to have fully lapsed, the opposition proceedings are only continued at the request of the opponent [R.84(1)]. The same principle applies in opposition appeal proceedings [R.100(1)]. But does this make sense if the opponent has not appealed? The Board does not think so.

Summary of Facts and Submissions

I. The patent proprietor (appellant) lodged an appeal against the decision of the opposition division to revoke European patent No. 1 356 821.

II. By a communication of the board dated 25 April 2016, the parties' attention was drawn to the fact that the patent had lapsed in all designated Contracting States and the appellant was invited to inform the board within two months from notification of the communication whether it requested a continuation of the appeal proceedings.

III. In reply to the board's communication the appellant notified the board with letter dated 27 June 2016 that it requested no continuation of the appeal proceedings.

Reasons for the Decision
1. If a European patent has lapsed in all designated Contracting States, opposition proceedings may be continued at the request of the opponent (see

Rule 84(1) EPC). According to Rule 100(1) EPC, this also applies in appeal proceedings following opposition proceedings.

However, if - as in the present case - the patent proprietor is the appellant, it would be inappropriate to allow the opponent(s) (respondent(s)) to decide whether the appeal proceedings shall be continued. For this reason, Rule 84(1) EPC has to be applied mutatis mutandis in such opposition-appeal proceedings so that it is the patent proprietor as the appellant who can request that the appeal proceedings be continued (see for example decision T 1733/09, point 2 of the Reasons, decision T 1313/10, point 1 of the Reasons, or decision T 1825/11, point 2 of the Reasons and the case law cited in these decisions).

3. As the patent proprietor has explicitly indicated that it does not request a continuation of the appeal proceedings (see section III, above), the appeal proceedings are to be terminated.


For these reasons it is decided that:

The appeal proceedings are terminated.

This decision T 1272/10 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T127210.20160711. The file wrapper can be found here. Photo by MartinStr obtained via Pixabay under CC0 1.0 license (no changes made).

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