J 4/17 - No resumption of proceedings after stay of 7 years
After the EPO send out an intention to grant in the patent application, entitlement proceedings against the patent were started before the District Court of The Hague (Article 61 proceedings). As a result the application was stayed at the EPO, starting at 28 March 2011. Proceedings are still pending and oral proceedings in the court case are scheduled for September 2018.
During the stay the applicant and a further party repeatedly asked for resumption of the grant proceedings under Rule 14(3). Resumption was granted by the legal division, which appeal is the subject of this case.
The board concluded that the legal division correctly exercised its discretionary powers to lift the stay. However, starting at reasons 5 there is a twist in the tale to the benefit of the appellants.
This decision is one of a series of identical decisions taken in the parent application and its divisionals. The board provided the following catch words:
Rule 14(3) EPC is silent on the reasons for setting a date for resumption of the proceedings for grant. It is thus to be concluded that the legislator let it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis.
Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction.
However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.
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