T 0500/12 - Opposition appeal continued after lapse

Key point

• The Board applies R84(1) EPC in appeal: the appeal of the opponent is continued at his request, even while patentee stated that the patent had been surrendered or lapsed in all States.

Analysis

• The Board states that the opponent had "the appellant provided evidence from several national patent registers showing that the opposed patent had not lapsed in all Contracting States and that it was still in force." Correct as that may be, it does not seem relevant: even if the patent had lapsed fully, the appeal had (imho) still be continued at the simple request of the opponent. If only because revocation is retroactive (from the outset) while lapse is not.

T 0500/12

Online 30.04.2015 - dated 24.04.2015 - Board 3.3.08 (Wieser, Julia, Rogers), for the decision, click here

Summary of Facts and Submissions

I. European patent number 1 716 233 was maintained by the opposition division in amended form in accordance with an Auxiliary Request 2. The opposition division considered the Main Request and Auxiliary Request 1 not to fulfil the requirements of Article 54 EPC. All requests were filed at oral proceedings before the opposition division on 1 November 2011.

II. An appeal was lodged by the opponent (appellant). In the statement setting out its Grounds of Appeal, the sole argument put forward by the appellant concerned a lack of inventive step of the request upheld by the opposition division (Article 56 EPC). As an auxiliary measure, oral proceedings were requested.

III. In reply to appellant's Grounds of Appeal, the respondents (patentees) referred only to their arguments submitted with a letter dated 28 February 2011 in reply to opponent's Notice of opposition. A copy of this letter was enclosed to the respondents' submissions. The respondents requested oral proceedings as an auxiliary measure.

IV. In a letter dated 6 May 2014, the respondents informed the board of their intention not to take further action in relation to the appeal proceedings and not to attend the payment of the national renewal fees for the patent. The request for oral proceedings was withdrawn.

V. In a communication issued on 30 June 2014, the board, with reference to Rule 84 (1) EPC, sought to clarify the appellant's intentions as regards the continuation of the appeal proceedings. The board informed the respondents that the appeal proceedings could not be terminated by informing the EPO that the opposed patent was surrendered.

VI. The appellant requested to continue the appeal proceedings. The respondents did not reply to the board's communication and did not file any submissions regarding appellant's request to continue the appeal proceedings.

VII. The board issued a communication pursuant to Rule 100(2) EPC informing the parties that appellant's Request to continue the appeal proceedings was granted (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, IV.C.6.2, page 849). [...]

Reasons for the Decision

Appellant's request for continuation of the appeal proceedings

1. In reply to the respondents' notice that they did not intend to take further action in relation to the appeal proceedings, that they did not pay the national renewal fees due in January 2014 and that they did not intend to pay these renewal fees within the available grace periods, the appellant requested the continuation of the appeal proceedings (Rule 84(1) EPC; cf. points V and VI supra).

2. The appellant provided evidence from several national patent registers showing that the opposed patent had not lapsed in all Contracting States and that it was still in force. The appellant further indicated that the annuity fees could be paid not only by the patentees but also by a third party. Furthermore, annuity fees could still be validly paid with surcharge until 31 July 2014 in many of the Contracting States and, even if annuity fees were not paid with surcharge in due time, reinstatement periods had also to be considered.

3. In the light thereof, the board granted appellant's request to continue the appeal proceedings and informed the parties accordingly in its communication pursuant to Rule 100(2) EPC (cf. point VII supra).