Monday, 2 December 2019

T 2492/18 No rest for the wicked

This case concerns an appeal against a decision by the Opposition Division not to continue with the opposition after the patent in question had lapsed in all contracting states. 

The outcome of the actual Opposition was an interlocutory decision to maintain the patent in amended form. The opponent filed an appeal against this decision, even though the EPO had already sent out an R.84(1) communication informing the opponent of the lapse of the patent and inviting him to indicate within 2m if the proceedings should be continued. The Opponent responded to this communication in time and indicated that proceedings should be continued. Thereafter, the opponent withdrew the appeal against the interlocutory decision.

After withdrawal of the appeal, the interlocutory decision became final. To complete the process, the patent proprietor must comply with the acts of R 81(2) - pay fee; file a translation of amended claims. If not done in time, the EPO must send a communication under R. 82(3) giving the proprietor a further period in which to preform these acts, upon payment of a surcharge. The consequence of failure to respond to this communication is revocation of the patent.

Possibly because of the somewhat unusual sequence of events, the EPO did not send out an R. 82(3), but rather informed the proprietor and the opponent that the opposition proceedings would be discontinued because opponent had not filed a request for continuation of the proceedings. This was a mistake on their part, violating the opponent's right to be heard. The opponent was also adversely affected, because discontinuation of an opposition leaves rights outstanding while revocation has retroactive legal effects.

The decision under appeal was set aside and the appeal fee was reimbursed. 

Summary of Facts and Submissions
I. On 4 October 2018 the opponent in the opposition proceedings against European patent EP 1286037 filed an appeal against the decision of the opposition division, dated 27 July 2018, not to continue the opposition proceedings in accordance with Rule 84(1) EPC. It provided the grounds of appeal and paid the appeal fee on the same day.
II. The appellant-opponent (hereinafter appellant) alleges that the opposition division when deciding not to continue the opposition proceedings, had ignored the request made by the appellant for continuation. The appellant refers in the grounds of appeal to its timely request for continuation, which was never withdrawn. It therefore challenges the reason given in the appealed decision, namely that it had not filed a request for the proceedings to be continued under Rule 84(1) EPC. Further the appellant argues that in ignoring its request the opposition division committed a substantial procedural violation.
III. The appellant requests that the opposition proceedings be continued and the appeal fee be reimbursed.
IV. On 24 May 2019 the Board sent out a communication to the parties with a preliminary opinion on the appeal. In the communication the Board provisionally agreed with the arguments presented by the appellant and indicated that it was inclined to set the decision under appeal aside and to remit the case to the opposition division in order to decide on the request for continuation, and also to order the reimbursement of the appeal fee. None of the parties replied to this communication.
V. As the appellant has only requested oral proceedings in case the Board would not decide positively on its requests, and the patentee has not reacted at all to the appeal, the Board has decided not to summon to oral proceedings but to take a decision on the basis of the state of the file.
Reasons for the Decision
1. The appeal complies with Article 106 to 108 and Rule 99 EPC and is therefore admissible.
2. According to Rule 84(1) EPC, opposition proceedings may be continued, even if the patent concerned has been surrendered or has lapsed in all the designated Contracting States, at the request of the opponent, which has to be filed within two months of a communication informing him of the surrender or lapse.
3. In the present case the (somewhat unusual) chronology of events was as follows. The opposition division issued its interlocutory decision to maintain the patent in amended form on 22 December 2016. The opponent was informed with a communication pursuant to Rule 84(1) EPC dated 2 February 2017 of the lapse of the opposed European patent, and was given a time limit of two months to file a request for continuation if it so wished. On 28 February 2017 the opponent filed an appeal against the decision of the opposition division, receiving the file number T 0529/17. On 14 March 2017 the opponent stated its wish to continue the opposition proceedings, explicitly referring to the communication dated 2 February 2017. On 26 April 2017 the opponent withdrew the appeal in the appeal proceedings T0529/17, but at the same time confirmed its wish that the opposition proceedings be continued, by an express reference to its previous request for continuation dated 14 March 2017. On 27 July 2018 (and thus more than one year after the request was made, and also more than one year after the request was confirmed when notifying the withdrawal of the appeal!) the opposition division decided not to continue the opposition proceedings. The reason given for the decision was that no timely request for continuation had been filed.
4. The Board agrees with the appellant that the reason advanced by the opposition division not to continue the opposition proceedings was incorrect, as indeed the file contains a letter of the appellant dated 14 March 2017 requesting within the required time limit and in an explicit and unambiguous manner that the proceedings be continued. Furthermore, the appellant had, when withdrawing its appeal against the interlocutory decision on 26 April 2017, expressly reconfirmed its request for continuation of the opposition proceedings and clearly stated that the withdrawal does not affect the request for continuation pursuant to Rule 84(1) EPC. Thus there could not have been any doubt as to the intentions of the opponent.
5. In this particular case the request for continuation was filed at the time an appeal was pending and it would have been within the competence of the Board in question to decide upon it. However the appeal was withdrawn after two months and thus before the Board was able to deal with it. From that moment on the competence to deal with the request was again with the opposition division. The course of events may have led to some confusion, but that does not take away the fact that a request for continuation was timely filed and the opposition division had an obligation to consider it.
6. The Board is also of the view that the appellant is adversely affected by the decision. Although the opposition proceedings had led to an interlocutory decision which had become final after the withdrawal of the appeal against it, the opposition procedure was not yet completed and continuation of the proceedings could still have legal significance. For completion of the opposition proceedings the new specification of the amended patent would have to be published (Article 103 EPC). This publication is conditional upon certain acts of the proprietor, see Rule 82 (2) EPC, such as payment of the prescribed fee and filing of translations of the amended claims. According to the same rule the Office shall invite the proprietor to perform these acts within a certain time period. The consequence of non-compliance with such an invitation is that the patent shall be revoked, see Rule 82(3) EPC. Contrary to a lapse or surrender, revocation has retroactive legal effects, see Article 68 EPC.
There is no indication in the file that an invitation under Rule 82(2) EPC has been sent to the proprietor.
7. It follows from the above that the opposition division apparently has not recognized and considered the request of the appellant for continuation and that the appellant is thereby adversely affected.
8. As the decision not to continue the opposition proceedings is based on an erroneous ground - absence of a timely request for continuation of the proceedings - it has to be set aside and the opposition division should take a new decision, with due consideration of the request of the appellant.
9. The Board also finds that completely ignoring an explicit and unambiguous request constitutes a substantial procedural violation. Indeed, the appellant was quite obviously not heard with respect to this request, contrary to Article 113(1) EPC. The fact that this may not have been intentional but merely the result of an oversight on the part of the opposition division, so that the opposition division was not aware of the request at all, is not relevant in this respect. The Board finds it equitable under the circumstances that the appeal fee be reimbursed.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division for further prosecution.
3. The appeal fee is reimbursed.
This decision  T 2492/18 (pdf) has European Case Law Identifier: ECLI:EP:BA:2019:T249218.20191104
The file wrapper can be found here. Image "Baboon" obtained under free Pixabay license

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