Monday, December 02, 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. 

Monday, September 03, 2018 T 1403/16 Can an opponent file a request for re-establishment having not timely responded to a R.84(1) invitation

The opposition division noted that the patent in suit had lapsed in all the designated contracting states and issued a communication under R.84(1) EPC inviting the opponent to file, within two months, a request for continuation of the opposition proceedings. By mistake, the opponent's representative failed to timely file the request under R.84(1). A request for re-establishment was filed. It was argued that re-establishment should be allowed in line with the exceptions given by the Enlarged Board in G 1/86. The opposition division did not see a reason to extend the scope of G 1/86 from opposition appeal proceedings to opposition proceedings and decided to declare the re-establishment request inadmissible and to discontinue the opposition. The opponent appealed. 

The Board of Appeal did not go into the issue whether the scope of re-establishment should be extended but came to the concluson that re-establishment would anyhow not apply to missing a time limit under R.84(1). Missing such a time limit does not have a direct loss as a consequence. The opposition division may decide to discontinue the opposition proceedings if no timely request is filed, but this is a separate decision. Such a decision can be appealed.

Friday, June 08, 2018 T2020/14 - Who can request continuation of opposition appeal proceedings after lapse of a patent?

In this case the BoA terminated the opposition appeal proceedings in which the patent proprietor was the sole appellant because the patent in suit granted in amended form in opposition had been surrendered with effect for all designated Contracting States and the proprietor had not indicated to continue with the proceedings.

According to Rule 84(1), EPC if a European patent has been surrendered or lapsed in all designated Contracting States the opposition proceedings may be continued at the request of the opponent. This applies also to appeal opposition proceedings according to R. 100(1). 

However, since in the present case the only appellant was the patent proprietor, the BoA states that it would be inappropriate to allow the opponent to decide.   

Friday, July 15, 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.

Friday, January 02, 2015 T 204/11 - A little EPC test

This should make for a nice item for a Paper D. The opposition division had rejected the opposition and maintained the patent as granted. However, during the appeal the granted patent
lapsed in all designated states. 

Can the opposition continue, and if so, how should the Board handle this?

(no parts of the decision were highlighted, but instead the entire decision was copied)


Summary of Facts and Submissions
 I. The opponent 1 (appellant) lodged an appeal against the decision of the opposition division posted on 16 November 2010, by which the oppositions against European patent No. 1 185 264 were rejected.

II. By communication of the board of 12 September 2014, the parties' attention was drawn to the fact that the patent had meanwhile lapsed in all designated contracting states, and the appellant was asked to inform the board whether it requested a continuation of the appeal proceedings.

III. The appellant did not reply within the time limit of two months.

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

2. Since the appellant has not, within the time limit set, requested the continuation of the appeal proceedings and the state of the file gives no grounds for the proceedings to be continued by the board of its own motion, the appeal proceedings are terminated (see T 329/88 of 22 June 1993; T 165/95 of 7 July 1997; T 749/01 of 23 August 2002; T 436/02 of 25 June 2004; T 289/06 of 17 December 2007).

Order
For these reasons it is decided that:
The appeal proceedings are terminated.
 

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T020411.20141210. The whole decision can be found here. The file wrapper can be found here. Photo by Alberto G.

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