J 0001/23 - Entitled to a share

Key points

• "The appeal of the registered applicant Beamocular AB (Beamocular) lies against the decision of the Legal Division, dated 13 October 2022, providing that the previously stayed patent grant proceedings for European patent application No. 16 708 122.3 (the application) be resumed, with Beamocular and the third party within the meaning of Rule 14 EPC, C-Rad Imaging AB (C-Rad), as co-applicants. "
• "-Rad informed the EPO that it had instituted proceedings before the Stockholm District Court (in case No. PMT 6829-17) against Beamocular to seek a decision within the meaning of Article 61(1) EPC, and it requested that the patent grant proceedings based on the application be stayed under Rule 14(1) EPC. "
• Proceedings were stayed.
• The Swedish Court of Appeal held that: "[...] declares that C-RAD Imaging AB has a better title than Beamocular AB (in bankruptcy) to half of the or those inventions specified in the patent claims [...] in the European patent application with publication number EP 3265852 as worded after the amendment made when the application was pursued at the European Patent office [...]"
• Seems the procedure before the EPO was not interrupted despite the bankruptcy (note, interruption must be applied by the EPO ex officio if it sees grounds).
• Note also that the resumption was first communication with a  Communication. The party requested an appealable decision, which was then issued. It says 'will be resumed'. Note that the party can appeal it, which is one of the few permitted procedural acts during a stay, I think.
• "It is established case law that the EPO is not competent to examine the substance and merits of a national entitlement decision (Case Law of the Boards of Appeal, 10th edition, July 2022, III.M.3.1.2, fifth and sixth paragraphs; G 3/92, Reasons 3.3 and 3.4). The Swedish Court explicitly based its decision on, inter alia, Article 18(1) of the Swedish Patents Act, (page 5, fourth full paragraph, "Legal points of departure"), and the Board has no competence to review the correctness of this legal basis."
• 
  
• A translation of the Swedish court decision can be found in the EPO file here.
• I omit a discussion of the headnote. It is a reply to the argument that "" the Swedish decision does not mention any ground, by agreement or law, for a transfer of rights from the inventors to C-Rad, i.e. that there is no reference to a legal situation or transaction which would have made C-Rad successor in title in compliance with Article 81, second sentence EPC in conjunction with Article 60(1) EPC". The interested reader could read the  Swedish decision to see how the court came to its conclusion. 
• The Legal Board explains that in "cases where a final sovereign decision of a national court  [of an EPC contracting state, it must be added!] has determined that a person other than the applicant is entitled to the grant of the European patent under Article 61(1) EPC. In such instances, the matter of by whom and how the right to the patent was acquired is deliberated and settled by the competent national court, and the EPO is bound by the court's conclusion without further requirement." 

EPO 

You can find the link to the decision after the jump. 

https://www.epo.org/en/boards-of-appeal/decisions/j230001eu1