T 1622/16 - The last case of 2020

 Key points

• This decision was the last one to be published in 2020 and therefore will stay on top in the list at  https://www.epo.org/law-practice/case-law-appeals/recent/2020.html. 
• The decision itself is not that interesting: the appeal proceedings are terminated due to lapse of the patent in all designated states. 
• First the timeline of the proceedings. The application filed as a PCT application in 2004, so the opposition-appeal proceedings were still not completed by a substantive final  decision in patent year 16. 
• As to the detailed procedure, there was nothing out of the ordinary, but also nothing for the EPO to be proud of in my view. The application was just stuck at all the typical backlogs that exist(ed) between 2004 and nowadays at the EPO. The EP Entry was in 2006, supplementary ESR in 2010. That's the notorious supplementary ESR black hole that the  EPO had in those days (source: difficult to find nowadays, but the target to issue Supplementary ESR's in six months was introduced in 2014 as the first stage of "Early Certainty from Search", see here). First Communication in 2011, Intention to grant in 2012. The opposition filed in 2014. Summons in 2015, decision OD in 2016. This was just the normal timeline for oppositions until the streamlining of the procedure in 2016 (note here). Appeal and Statement of ground filed by the opponent in 2016, response January 2017, summons Board January 2020, preliminary opinion July 2020. So this is just the typical backlog at the Boards of appeals nowadays.
• So we are just looking back at the past slowness of the EPO first instance proceedings. 
• The title of the application is "EXHAUST EMISSION CONTROL DEVICE", dealing with a filter cartridge for reducing fine particulate emissions from diesel engines. So also as a matter of technology, things have moved on and since 2004. "Clean diesel" sounds very 2010's to me. 
• As an exercise for any EQE candidates reading this post: why are only DE, FR, and GB designated in the patent (B1) and how was this choice made? 
• Also interesting is that the termination of the proceedings is pronounced in a formal decision of the Board, not in a Notice / letter of the Registrar.
• Rule 84(1) EPC provides that "if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent". Rule 84(1) EPC does not specify what happens if the opponent does not file such a request. The Board: "According to an interpretation per "argumentum e contrario" of this provision it follows that the appeal proceedings are to be closed if the opponent and sole appellant does not submit such a request within the period prescribed." (established case law; standard recital). 

T 1622/16 -  link

Summary of Facts and Submissions

I. The appellant/opponent lodged an appeal against the interlocutory decision of the opposition division of 6 May 2016 which found that European patent No. 1 701 011 in an amended form met the requirements of the EPC.

II. In a communication dated 29 September 2020, the Board informed the parties that the patent in suit had lapsed with effect for all the designated Contracting States and invited the appellant to inform the board, within two months from notification of the communication, whether it requested a continuation of the appeal proceedings (Rules 84(1) and 100(1) EPC).

III. No reply was received from the appellant/opponent within the two month period.

Reasons for the Decision

1. Rule 84(1) EPC provides that 'if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse.'

2. Based on Rule 100(1) EPC, Rule 84(1) EPC applies mutatis mutandis in opposition appeal proceedings, i.e. the appeal proceedings may be continued at the request of the appellant/opponent filed within two months as from notification of the lapse.

3. In the present case, the notification of the lapse within the meaning of Rule 84(1) EPC was sent by registered letter to the appellant on 29 September 2020. The period for requesting continuation of the appeal proceedings ended on 9 December 2020 by virtue of Rule 126(2) EPC) in conjunction with Rule 131 EPC. No such request was filed within that time limit.

4. According to an interpretation per "argumentum e contrario" of this provision it follows that the appeal proceedings are to be closed if the opponent and sole appellant does not submit such a request within the period prescribed.

5. Since no timely request was filed , the appeal proceedings are to be terminated.

Order

For these reasons it is decided that:

The appeal proceedings are terminated.