J 0014/19 - (II) Stay of proceedings

Key points

• The Legal Board uses this case to give an overview of the legal framework for the stay of proceedings under Rule 14 EPC. A translation is given below. I recommend reading the entire decision.
• All following quotes are translations.
• “[A stay] will take place immediately. The applicant is informed of the stay of the proceedings by means of a communication - without having to be heard beforehand. He then has the opportunity to oppose this and to obtain an appealable decision []. The stay of the grant procedure takes effect immediately on the day on which the fulfillment of the requirements of Rule 14(1) EPC has been proven by the third party [] and can also be pronounced retrospectively to this day” (internal citations omitted).”
• “3.5 If the stay of the proceedings was wrongly ordered by [the Legal Division], in the appeal proceedings only the continuation of the granting proceedings with effect for the future can be ordered. The immediate effect of the stay can neither be eliminated retrospectively nor reversed by a decision in the appeal proceedings [].”
• “According to Rule 14(1) EPC, in order to stay the grant procedure, a third party must prove that the third party (i) has initiated proceedings (ii) against the applicant, (iiii) with the aim of obtaining a decision within the meaning of Article 61(1) EPC”
• “the European Patent Office has no discretion in deciding on a stay under Rule 14 (1) EPC. If a third party proves that the requirements specified in Rule 14 (1) EPC have been met in good time, the grant procedure must be stayed”
• The applicant had also requested a lifting of the stay, based on the argument that the stay was abuse of procedure. The Legal Board then turns to the meaning of that concept under the EPC.
• “ In order to avoid contradictions in valuation, such questions [about alleged abuse of procedure] are to be assessed by the European Patent Office autonomously within the framework of the stay procedure, i.e. independently of national legal systems". 
• “The improper use of a legal right can under certain circumstances constitute abuse of procedure. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of procedure must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof lies with the person who invokes abuse of procedure”

 

Headnote (translation)

1.) Evidence of the existence of the prerequisites for the stay of the proceedings under Rule 14(1) EPC must be provided during pending grant proceedings and thus before the notice of grant is published in the European Patent Bulletin. Evidence that is submitted after this point in time may not be taken into account by the European Patent Office (No. 4.3 of the reasons).


2.) The question at which point in time a national procedure within the meaning of Rule 14 (1) EPC in conjunction with Article 61(1) EPC is deemed to have been initiated is to be assessed according to the procedural law of the state whose courts are responsible for taking a decision within the meaning of Article 61 (1) EPC (No. 6.1 and 6.2 of the reasons).



3.) When applying foreign law, the European Patent Office must apply this, as far as possible, in the overall context of the foreign legal system. As an international organization independent of state authorities and courts, the European Patent Office is not bound by the case law of national courts for the interpretation of the foreign legal norms to be applied. However, if known to the European Patent Office, national case law of the highest court in particular should be taken into account and assessed in the decision-making process (No. 6.5 of the reasons).


4.) Questions of abuse of rights also arise in the proceedings before the European Patent Office (see e.g. Article 16 (1) e) RPBA 2020). In order to avoid contradictions in valuation, such questions are to be assessed by the European Patent Office autonomously within the framework of the stay procedure, i.e. independently of national legal systems (No. 6.22 of the reasons).

5.) The improper use of a right can under certain circumstances constitute abuse of procedure. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of procedure must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof lies with the person who invokes abuse of procedure (No. 13.1 of the reasons).

J 0014/19 -  J14/09

https://www.epo.org/law-practice/case-law-appeals/recent/j190014du1.html

 

Translation

 [...]

2. Right to the grant of a European patent

 2.1 According to Article 60(1) EPC, the right to a European patent belongs to the inventor or his successor in title. In proceedings before the European Patent Office, according to Article 60(3) EPC, it is deemed that the respective applicant - i.e. the person who formally requested the grant of the European patent - has the right to the European patent.

2.2 The European Patent Office is not empowered to decide whether a particular applicant has a claim under Article 60(1) EPC to the grant of a European patent for the subject matter of a particular application (G 3/92, No. 3 of the reasons). According to the Protocol on Recognition, the courts of the contracting states are exclusively responsible for this. These can award the right to the grant of the European patent to a person who is different from the applicant before the European Patent Office.

2.3 According to Article 9(2) of the Recognition Protocol, the jurisdiction of the court whose decision on the right to the grant of a European patent is to be recognized and the legality of this decision may not be reviewed. Although primarily addressed to the contracting states of the EPC, the recognition protocol is part of the EPC according to Article 164(1) EPC and is therefore also binding for the European Patent Office (see J 36/97, No. 4 of the reasons; for the recognition obligation, see also Rule 16(2) EPC).

2.4 If the right to the grant of the European patent is granted by a final decision of a national court to a person other than the applicant, this person can take certain acts of disposal under Article 61(1) EPC: the actual entitled person can prosecute the application in his own name, a new application for the same invention or request that the application be refused.

3. Stay of the grant procedure - purpose and effect

3.1 On the basis of the fiction of Article 60(3) EPC, an unauthorized applicant can, until a final decision by a national court within the meaning of Article 61(1) EPC has been received, undertake dispositions in proceedings before the European Patent Office that are not in the interests of the actually entitled person. The patent grant procedure will therefore be stayed under Rule 14(1) EPC if a third party provides evidence of having initiated national judicial proceedings with the aim of obtaining a decision within the meaning of Article 61(1) EPC and that third party does not agree in writing to continuing the proceedings for grant.

 3.2 The stay of the grant procedure therefore serves to protect the third party who could be established as the legal owner of the application after the national court proceedings have been finalized (J 7/96, No. 2.3 of the reasons; J 20/05, No. 3 of the reasons; J 2/14, No. 3.4 of the reasons; J 17/12, No. 5.1 of the reasons). The stay of the proceedings also protects the third party against the assertion of unjustified injunctive relief claims and thereby also ensures their freedom of action. In addition, Rule 14(3) EPC and Article 61(1) EPC enable the person actually entitled to obtain the status of the applicant and the associated rights in the centralized procedure before the European Patent Office. Without the possibility of staying the proceedings, the person actually entitled would have to conduct a separate vindication procedure under national law for each designated contracting state in which the patent was validated from the granting of the European patent.

3.3 According to Rule 15 EPC, neither the application nor a designation of a contracting state may be withdrawn from the date on which evidence is provided that the procedure has been initiated. This is intended to protect the possibly actually entitled person from adverse actions by the applicant (J 7/96, No. 8 reasons; J 24/13, No. 3.4 of the reasons). In addition to this prohibition of disposal for the applicant, a stay means that the European Patent Office can no longer undertake any effective legal acts. The grant procedure remains unchanged in the legal stage in which it was at the time of the stay (J 38/92, No. 2.5 of the reasons; see also J 17/12, No. 4.2 and 6.8 of the reasons).

3.4 As a preventive measure to safeguard the rights of the third party, the stay will take place immediately. The applicant is informed of the stay of the proceedings by means of a communication - without having to be heard beforehand. He then has the opportunity to oppose this and to obtain an appealable decision (J 28/94 of December 4, 1996, No. 2.1 and 2.2.1 of the reasons; J 15/06, No. 5 of the reasons). The stay of the grant procedure takes effect immediately on the day on which the fulfillment of the requirements of Rule 14(1) EPC has been proven by the third party (J 9/12, No. 11 of the reasons) and can also be pronounced retrospectively to this day ( J 7/96, No. 3 of the decision formula; J 36/97, No. 2 of the decision formula; J 15/06, No. 14 of the reasons).

3.5 If the stay of the proceedings was wrongly ordered by a department of first instance [note: i.e. the Legal Division], in the appeal proceedings only the continuation of the granting proceedings with effect for the future can be ordered. The immediate effect of the stay can neither be eliminated retrospectively nor reversed by a decision in the appeal proceedings (J 9/06, No. 5.2 of the reasons; see also J 10/19, No. 5-7 of the reasons, on the interruption of the proceedings due to bankruptcy under Rule 142 (1) b) EPC).

4. Requirements for stay and time of proof

4.1 According to Rule 14(1) EPC, in order to stay the grant procedure, a third party must prove that

- the third party against the applicant

- has initiated proceedings

- with the aim of obtaining a decision within the meaning of Article 61(1) EPC (see J 15/13, No. 2.6.2.3 of the reasons).

4.2 The stay of a grant procedure under Rule 14(1) EPC also requires a pending grant procedure. According to Article 97(3) EPC, the decision to grant a European patent takes effect on the date on which the mention of the grant is published in the European Patent Bulletin. Until then, a grant procedure is pending and its stay is possible (J 7/96, No. 10 of the reasons).

4.3 Evidence of the existence of the prerequisites for a stay of the proceedings under Rule 14(1) EPC must be provided during pending grant proceedings and thus before the mention of the grant is published in the European Patent Bulletin. Evidence that is submitted after this point in time may not be taken into account by the European Patent Office for this purpose.

4.4 The Respondent submitted the excerpt from the complaint and the judicial confirmation of receipt before the mention of the the grant of the European patent was published in the European Patent Bulletin and thus in good time. The full statement of grounds, however, was only submitted after this announcement. This evidence is therefore not to be taken into account when answering the question whether the respondent has demonstrated the existence of the requirements mentioned in Rule 14(1) EPC during pending grant proceedings.

5. Proof of party identity

5.1 Proof of the identity of the parties required under Rule 14(1) EPC was provided with the timely submitted extract from the claim: the respondent requesting stay is the plaintiff in the national court proceedings and the appellant and applicant are the defendants.

6. Evidence that a national procedure has been initiated

6.1 Rule 14(1) EPC does not determine the point in time at which national proceedings are deemed to have been initiated. Elsewhere, too, the EPC does not contain an autonomous definition of the lis pendens of national court proceedings (see, on the other hand, the autonomous definition of the time at which a court is referred in Article 32 Brussels I Regulation). The question of the point in time of lis pendens must therefore be judged according to the procedural law of the state whose courts have been brought before a decision within the meaning of Article 61(1) EPC (see J 7/00, No. 3.1 of the reasons; J 2/14 , No. 2.2 of the reasons; see also T 1138/11, No. 1.7.1. of the reasons at the time of lis pendens under Rule 89(1) EPC when the alleged infringer joined).

6.2 Article 8 of the Recognition Protocol supports this interpretation result. According to this provision, a court later seized for the same claim for the grant of a European patent between the same parties must declare that it has no jurisdiction in favor of the previously seized court. Which court was called before must be decided according to the time of the pending litigation. This is just as little defined in the Protocol on Recognition as in Rule 14 (1) EPC. In the interests of a uniform European legal understanding, the case law of the European Court of Justice on Article 21 of the Brussels Convention - which corresponds to Article 8 of the Recognition Protocol in terms of content and precedes it - can be used as support. In this regard, too, the time of lis pendens must be assessed for each court according to its respective national procedural law (ECJ, case 129/83, No. 15 of the reasons; ECLI:EU:C:1984:215).

6.3 According to the respective national procedural law of the contracting states to the EPC, lis pendens can in principle begin either with the filing of the document initiating the proceedings or only when this document is served on the opposing party. However, differences with regard to the point in time of lis pendens do not only exist between the contracting states. Even within a single contracting state, lis pendens can begin at a different point in time, depending on the legal process.

6.4 In the present case, the German courts were called upon to make a decision within the meaning of Article 61 (1) EPC. The question of the timing of the lis pendens of the national proceedings must therefore be assessed under German procedural law. From the point of view of the European Patent Office, German law is foreign law in the context of conflict of laws.

6.5 When applying foreign law, the European Patent Office must apply this, as far as possible, in the overall context of the foreign legal system. As an international organization independent of state authorities and courts, the European Patent Office is not bound by the case law of national courts for the interpretation of the applicable foreign legal norm (on the lack of binding effect of the case law of the European Court of Justice, see R 1/10, No. 2 of the reasons). However, if known to the European Patent Office, national case law of the highest court in particular should be taken into account in the decision-making process.

6.6 The appellant's reference to Article 2(3) of the Paris Convention (Paris Convention) appears to be based on a misunderstanding. The purpose of this provision is to allow the contracting states of the Paris Convention to make exceptions to the requirement of national treatment in the areas mentioned. Principles for the application of national law in the context of stay proceedings before the European Patent Office cannot be found in this provision.

6.7 In Germany, lis pendens in administrative court proceedings begins with the filing of an action in court (Section 90 VwGO); in civil court proceedings, however, only when the action is served on the defendant (§§ 253 (1), 261 (1) ZPO).

6.8 The Respondent's patent notification suit was received by the Munich Administrative Court on May 3, 2019; this made the dispute pending. Pursuant to Section 173 VwGO in conjunction with Section 17b (1) GVG, the effects of the lis pendens remained when the Munich Administrative Court referred the complaint to the Munich Regional Court for inadmissibility of the administrative legal process.

6.9 The appellant is of the opinion that lis pendens did not start with the receipt of the vindication suit at the Munich Administrative Court, but at the earliest with the referral to the Munich I Regional Court. The appellant justified this with references to German legal comments.

6.10 Statutory comments are not official publications and do not belong to the law created by legislation or to case law. Taken individually, they are therefore not to be taken into account when applying foreign law by the European Patent Office.

 

6.11 Insofar as national case law is cited in legal comments on the interpretation of the national legal norms to be applied by the European Patent Office, the parties involved must extract this case law from the comments and present it separately.

6.12 In the excerpts of the comments submitted by the appellant, the footnotes or references to the statements made therein are partially missing. Parties and their representatives should not assume that the Boards of Appeal of the European Patent Office have access to the entire legal literature of all contracting states to the EPC, especially if this literature does not concern patent law. The legal comments on the German administrative courts statute cited by the appellant were therefore only taken into account to the extent that they were presented.

6.13 Insofar as the statements in the comments mentioned by the appellant are supported by case law, these are predominantly individual decisions by German appellate courts. A uniform, consolidated case law of the highest federal courts cannot be inferred from the comment excerpts presented. In addition, the circumstances of the decisions contained in the comments differ significantly from the circumstances of the case at hand.

[…]

6.20 With regard to the question of abuse of rights, the Respondent referred to the judgment of the Regional Court Munich I of April 4, 2016 in the case 7 O 4170/15. In it, the regional court stated that filing a patent vindication suit with the administrative court is not an abuse of law, as the procedural rules allow this procedure. The motivation behind the choice of the court seized to bring about the effects of lis pendens more quickly does not constitute an abuse of law according to the Munich District Court I. The regional court also held that Section 17b (2) sentence 2 GVG regulates the reimbursement of costs in the event of an appeal to an incompetent court and that the legislature has therefore already provided a regulation to deal with the compensation of the consequences for the respondent caused by filing the case with an incompetent court.

 

6.21 Overall, the national case law brought up by the parties involved does not offer any reason to question the legal consequences that are directly inferred from the law - i.e. Section 173 VwGO in conjunction with Section 17b (1) GVG. Accordingly, the patent vindication lawsuit became pending on May 3, 2019 and remained in effect after being referred to the Munich I Regional Court. With the confirmation of receipt by the Munich Administrative Court, which was submitted in good time, the Respondent therefore provided evidence of the initiation of national proceedings.

 

6.22 Questions of abuse of rights also arise in proceedings before the European Patent Office (see e.g. Article 16(1)(e) RPBA 2020). In order to avoid contradictions in valuation, such questions are to be assessed autonomously by the European Patent Office within the framework of the stay procedure, i.e. independently of national legal systems. With regard to the submissions of the parties, the question of abuse of rights is discussed in the context of the auxiliary request for the continuation of proceedings under Rule 14(3) EPC (see below, No. 13 of the reasons, in particular No. 13.6 of the reasons).

 

7. Evidence of a procedure within the meaning of Rule 14(1) EPC in conjunction with Article 61(1) EPC

7.1 A procedure within the meaning of Rule 14(1) EPC in conjunction with Article 61 (1) EPC is a procedure in which a person can be granted the right to the grant of the European patent at issue; the European patent application or the European patent must be clearly identifiable (J 9/06, No. 4.4 of the reasons).

 

7.2 The appellant motions, among other things, can be taken from the complaint extract submitted in good time. These determine the type and scope of the request for legal protection and thus the tenor of the court decision sought. The petitions expressly request the assignment of the right to the grant of the patent by the appellant to the respondent and the submission of a declaration of consent for the description of the applicant's position in the proceedings before the European Patent Office. The European patent number is given in the complaint and can therefore be clearly identified as the patent at issue in the proceedings before the European Patent Office. In addition, it can be inferred from the submitted excerpt that the lawsuit is a "patent vindication" because of "the unlawful removal or unauthorized patent application by the defendant". The extract from the complaint therefore demonstrated that the proceedings initiated by the Respondent were proceedings within the meaning of Rule 14(1) EPC in conjunction with Article 61(1) EPC.

 

7.3 In the present case, the question of whether a procedure within the meaning of Rule 14(1) EPC in conjunction with Article 61(1) EPC had been initiated could be understood as the submission of facts from which the claims were derived, without examining the plea set out in the statement of claim - get answered.

 

7.4 This does not mean that the European Patent Office is prevented from examining the entire application with regard to the question of whether proceedings within the meaning of Rule 14(1) EPC in conjunction with Article 61(1) EPC have been initiated. In J 15/13 the applicant submitted that the national proceedings initiated were only in terms of name - but not in terms of content - a process for determining the right to the application. In such a case, it is indeed appropriate to check the accuracy of that argument on the basis of the grounds of claim.

7.5 According to Rule 14(1) EPC, such a review is also limited to the question of whether proceedings were initiated "with the aim" of obtaining a decision within the meaning of Article 61(1) EPC. It does not extend to an assessment of the chances of success of the action, as this would encroach on the exclusive jurisdiction of the national court appointed to decide (J 3/18, No. 5 of the reasons). According to the Protocol on Recognition, the examination of the content of the action is reserved for the national court; the European Patent Office has no authority in this regard (see G 3/92, No. 3 of the reasons). The assessment of the conclusiveness of the action, that is to say whether the facts put forward by the plaintiff in the statement of grounds justify the claims, is part of the examination of the merits of the action and is therefore also reserved for the national court.

7.6 Contrary to the appellant's view, decision J 15/13 does not require an unconditional examination of the grounds of action in every case. On the basis of the specific circumstances of the individual case, it was rather stated in J 15/13 that the boards of appeal had the right to examine whether proceedings within the meaning of Rule 14(1) EPC in conjunction with Article 61(1) EPC had been initiated, also extends to the pleas in law. We have to agree with this statement. In this respect there is no contradiction to this decision.

7.7 The definition of the subject of the dispute under German law concerns questions of legal force and other lis pendens within the German legal system. Contrary to the appellant's view, this definition is therefore not relevant for the question of whether there is a procedure under Rule 14 (1) EPC in conjunction with Article 61 (1) EPC. In addition, the examination of whether such a procedure exists must be based on the situation at the time of the decision of the European Patent Office. The hypothetical possibility, mentioned by the complainant, of changing the motions for action at a later date is therefore irrelevant.

8. Discretion, evaluation of evidence and standard of evidence

8.1 The European Patent Office has no discretion in deciding on a stay under Rule 14 (1) EPC. If a third party proves that the requirements specified in Rule 14 (1) EPC have been met in good time, the grant procedure must be stayed (J 33/03, No. 2.1 of the reasons; see also J 28/94 of December 4, 1996, No. 3.1 of the reasons and J 7/96, No. 2.1 of the reasons).

 

8.2 From the fact that a stay under Rule 14 (1) EPC is not a discretionary decision, in the appellant's view it follows that the European Patent Office has no discretion regarding the question whether the originally submitted evidence is sufficient to examine the proof of initiating proceedings within the meaning of Rule 14 ( 1) EPC in conjunction with Article 61 (1) EPC. 

8.3 This is not to be agreed. Discretionary means that the decision-making body of the European Patent Office is in principle open to several different decisions based on certain factual circumstances on the legal side. This is not the case with Rule 14(1) EPC: if the actual conditions mentioned therein are met, the proceedings must be stayed; if these requirements are not met, no stay may take place.

8.4 A distinction must be made between this and the question of whether the actual requirements for the stay under Rule 14(1) EPC are met or not. This is not a question of judgment, but a question of evaluating evidence. In this case, the decision-making body uses the evidence to convince itself of the correctness of the alleged facts (for free assessment of evidence see G 1/12, No. 2 of the order).

 

8.5 If, in the opinion of the decision-making body, a material fact has not been established, it can order further evidence to be presented under Article 114(1) EPC. This also includes the ordering of the submission of the complete application as evidence of the alleged initiation of proceedings within the meaning of Article 61(1) EPC. This possibility does not contradict the fact that the decision to stay proceedings under Rule 14(1) EPC is not a discretionary decision.

8.6 The appellant also referred to the standard of evidence to be used, but did not provide any convincing reasons why, when asked whether national proceedings within the meaning of Rule 14(1) EPC in conjunction with Article 61(1) EPC had been initiated, the standard evidence standard in the proceedings before the boards of appeal, i.e. the balance of probabilities (see case law of the boards of appeal, 9th edition 2019, III.G.4.3) should be deviated from. Contrary to the appellant's view, the fact that the applicant does not need to be heard before a decision to stay the proceedings under Rule 14 EPC does not speak in favor of it. Rather, this is due to the fact that the stay is a preventive and timely measure to safeguard the rights of the third party (see above, No. 3.4 of the reasons).

 

8.7 In addition, after the stay of the grant procedure, the applicant can request the continuation of the procedure under Article 14(3) EPC at any time - and also repeatedly. It follows from the party identity required under Rule 14 (1) that the applicant usually has access to the documents contained therein due to his party status in the national procedure. As a rule, the applicant can submit documents in the national proceedings without the involvement of the opposing party and can choose the time of his request for continuation under Article 14(3) EPC himself. Legal questions of fundamental importance do not arise in this context.

 

9. Continuation of the grant procedure under Rule 14 (3) EPC

9.1 When the grant procedure is stayed or later in accordance with Rule 14(3) EPC, the European Patent Office may set a point in time at which it intends to continue the grant procedure regardless of the status of the national proceedings initiated. According to the established case law of the boards of appeal, the competent decision-making body of the European Patent Office has discretion (J 1/16, No. 3 of the reasons; J 3/18, No. 3 of the reasons).

9.2 In exercising its discretion, the decision-making body must weigh up the interests of the applicant and the third party who has initiated the national vindication procedure against each other and be guided by the regulatory purpose of Article 61 EPC (J 13/12, No. 3.1.10 of the reasons; see also J 2/14, nos. 3.3 and 3.4 of the reasons).

9.3 In principle, the applicant has an interest in completing the granting procedure as early as possible in order to then be able to use the rights from the European patent, for example to license or prohibit the use of the invention by others. The third party, in turn, has an interest in preventing any acts of disposal by the applicant before the national proceedings have been finalized and ensuring their own freedom of action.

9.4 Which of these two conflicting interests is ultimately justified depends on the outcome of the national proceedings and can only be determined beyond doubt once they have been finalized. If the applicant is entitled to the grant of the European patent, his interest in the continuation was justified; however, if the third party is entitled to this claim, their interest in the stay was justified. However, only the national courts have jurisdiction to clarify the question of actual entitlement (see above, No. 2.2 of the reasons). The balancing of interests by the European Patent Office according to Rule 14(3) EPC therefore basically has no substantive assessment of the national court proceedings (J 24/13, No. 3.3 of the reasons; J 2/14, No. 3.3 of the reasons) and thus according to other criteria to be done.

 

10. Criteria for exercising discretion

 

10.1 When weighing interests, the following criteria in particular must be taken into account (J 4/17, No. 4.3 of the reasons; see also J 6/10, No. 4.2 of the reasons and J 15/13, No. 2.5 of the reasons):

- how long the proceedings before the national courts or authorities have already lasted,

- how long the stay of the he granting process is already ongoing,

- whether the stay is at a late stage of the granting procedure and

- whether there is illegal behavior on the part of the third party.

10.2 The decision-making bodies of the European Patent Office have a certain amount of leeway in exercising their discretion. When reviewing the exercise of this discretion, the boards of appeal generally limit themselves to whether the department of first instance exercised the discretion in accordance with the correct criteria and in an appropriate manner and did not exceed the discretion granted to it (G 7/93, No. 2.6 of the reasons ).

10.3 This principle also applies to the review of a discretionary decision under Rule 14(3) EPC (J 15/13, No. 2.3 of the reasons; see also J 4/17, No. 4.1 of the reasons and J 3/18, No. 4 of the reasons). If the department of first instance has recognized the scope for discretion, has comprehensively consulted the aspects to be included in the weighing, has not incorporated any irrelevant considerations and has not revealed any conceptual errors in the assessment of the circumstances, there is no error of judgment and the Board is not allowed to make its own discretion to the position of that of the Legal Division (J 1/16, No. 3.2.2 and 3.2.3 of the reasons).

10.4 In its discretionary decision on the appellant’s request for continuation, the Legal Division took into account both the duration of the national vindication proceedings and the duration of the stay (see No. II.4.1 of the reasons for the contested decision). The fact that both the national vindication procedure and the stay of the grant procedure were extremely short-lived was assessed in a comprehensible manner in favor of the respondent by the legal department.

10.5 The Legal Division also took into account the late filing of the stay request in its decision, namely in the context of its examination of whether the Respondent was pursuing an improper delay tactic (see No. I.10 and No. II.4.2 - 4.2.1 of the reasons for the contested decision ). In this regard, the Legal Division came to the understandable conclusion that the late filing of the stay application and the vindication action can be traced back to previous settlement talks and therefore no legal abuse can be identified.

 

10.6 The appellant submits that the Legal Department did respond to their argument, when balancing the interested,  that a final judgment on the vindication action could only be expected at the end of the patent term due to the expected overall duration of the proceedings. Likewise, the fact that the invention was already the subject of extensive counterfeiting by competitors and that the Respondent delayed the proceedings in an improper manner had not been taken into account, or not correctly.

10.7 At the outset, it should be noted that when exercising its discretion under Rule 14 (3) EPC, the Legal Division is not obliged to take up every single argument of the parties (see Case Law of the Boards of Appeal, 9th edition 2019, III.B.2.4.3) .

 

11. Total duration of proceedings and patent term

11.1 In its decision, the Legal Division took into account the complainant's submissions on the forecast total duration of the proceedings for the vindication action insofar as it did not consider this to be relevant (see No. II.4.1 of the reasons). Although the board does not share this view in its absolute terms, the already elapsed length of the national proceedings is indeed of greater importance. With regard to the future duration of third-party proceedings before national courts, the European Patent Office should only make forecasts based on specific indications (negotiation dates, conclusion of the first-instance proceedings, etc.). This is all the more true in the early stages of such national procedures.

11.2 In any case, if the entire term of protection was exhausted, the remaining term of the European patent would currently be twelve years. Even according to the appellant's prognosis, a final decision in the national proceedings would therefore not only be available at the end of the patent term.

12. Counterfeiting of Competitors

12.1 The fact that the invention is already the subject of extensive counterfeiting by competitors essentially affects the applicant's interest in being able to use the rights from the European patent for himself as early as possible. Whether this interest is justified ultimately depends on whether the applicant is actually entitled to the grant of the European patent (see above, No. 9.4 of the reasons). Accordingly, the Respondent replied that it was also interested in pursuing the use of the invention by competitors. In addition, the appellant's interest in this regard in no way outweighs her own interest in being able to dispose of her invention herself.

 

12.2 In the Chamber's view, the unlawful use of the invention of the application in suit by competitors is detrimental to the person who is actually entitled to the grant of the European patent. However, the clarification of this question falls within the exclusive competence of the national courts. In the weighing of interests in the context of a request to continue the grant procedure under Rule 14 (3) EPC, this circumstance in and of itself is therefore not particularly important.

13. Abusive Conduct

13.1 The improper use of a right may under certain circumstances give rise to abuse of the law. This is the case, for example, if the exercise of rights is predominantly intended to cause damage and other legitimate purposes take a back seat. Abuse of the law must be unequivocal and requires careful examination and weighing of the individual circumstances. The burden of proof falls on the person who invokes abuse of the law.

13.2 The Appellant submits that the Respondent is delaying the granting procedure in an improper manner through the following behavior:

- despite many years of knowledge of the registration process, the request for stay had only been submitted shortly before the end of the granting process;

- the settlement negotiations mentioned by the Respondent had been exhausted in claims made by the applicant;

- according to the respondent's own statements, the vindication action was only a "formal means" and was deliberately brought in through an inadmissible legal process; and

- the statement of grounds for the vindication action was deliberately withheld in the application for stay.

13.3 The legitimate purpose of the stay of the grant procedure is to safeguard the rights referred to in Article 61 (1) EPC and the freedom of action of those actually entitled (see above, No. 3.2 of the reasons). Abuse of rights would exist if the Respondent did not exercise her right to request the stay of the proceedings primarily for this purpose, but instead primarily for the purpose of damaging the Appellant by delaying the granting procedure. Delaying a process, for example with incorrect factual assertions or futile legal objections, requires awareness of the incorrectness of one's own point of view. In the given context, it should therefore be possible to establish beyond doubt that the Respondent does not consider herself to be the person actually entitled. The burden of proof for this lies with the complainant.

 

13.4 The time chosen by the respondent to submit the request for stay of the grant procedure shortly before grant is not an indication of abuse of law, but merely a criterion to be taken into account when exercising discretion under Rule 14 (3) EPC (see above, No. 10.1 of the reasons) . The Respondent declares that she was waiting until shortly before granting that she wanted to wait to see what the subject of the patent in the version to be granted would be and that she had also negotiated settlement with the Appellant before submitting the request for stay. In this context, it is irrelevant whether or not the complainant considered the settlement of a settlement to be completely hopeless. The decisive factor is rather whether the Respondent herself seriously considered the possibility of a positive conclusion to these discussions or not. The e-mail from an employee of the Respondent dated May 3, 2019 to an employee of the Appellant suggests this: The Respondent reflects the opinion that "we will find a partnership agreement on our subject of patent applications" these conversations are therefore not an indication of abuse of law.

 

13.5 From the fact that the respondent's employee in the email dated May 3, 2019 viewed the filing of the vindication action as a "formal means" to allow "time for further discussions" for a partnership agreement in the patent application win, no abuse of law can be derived either. First of all, it is merely a matter of disclosing the intended appeal to a national court to clarify the question of the authorization to register during ongoing settlement discussions. The conclusion of the grant procedure would have put the Respondent in a worse position to the extent that, after the European patent had been granted, it would have had to conduct a separate vindication procedure under national law for each designated contracting state in which the patent was validated and could have been exposed to injunctive relief (see above , No. 3.2 of the reasons). It can be assumed that this would have resulted in a deterioration in the respondent's negotiating position in the settlement discussions with the complainant. The aim of avoiding such a disadvantage by staying the grant procedure before the European Patent Office does not constitute an unfair motive.

 

13.6 Pursuant to Section 173 VwGO in conjunction with Section 17b (1) GVG, the effects of lis pendens remain if an administrative court refers an action to a court of ordinary jurisdiction (see above, No. 6.21 of the reasons). It is not an abuse of law for a party to make use of a possibility that is expressly provided for in a national procedural system. This is also not the case if this results in an advantage for this party in the proceedings before the European Patent Office. In the present case, this advantage consisted in the establishment of an earlier lis pending action for the purposes of Rule 14 (1) EPC. However, this does not constitute an unfair motive.

 

13.7 The fact that the Respondent did not submit the complete statement of claim but only an extract with the application for stay of the grant procedure does not indicate any abuse of law either. The transmission of only part of the application creates a risk for the applicant that the transmitted extract will not be sufficient to prove that a procedure has been initiated with the aim of reaching a decision within the meaning of Article 61 (1 ) EPC. In the case at hand, however, this evidence could be provided with the submitted extract from the complaint (see above, No. 7.2 of the reasons).

 

13.8 The Respondent also subsequently submitted the complete statement of claim including the statement of grounds, albeit only after the notice about the grant had been published in the European Patent Bulletin. To assess the question of whether the prerequisites for the stay of the proceedings were met in time - i.e. while the grant proceedings were still pending - a statement of grounds submitted after this point in time may not be used (see above, no. 4.3-4.4 of the reasons). However, such evidence may be taken into account when deciding on a request to continue the grant procedure under Rule 14(3) EPC. In the present case, the inclusion of the complete statement of grounds does not make the vindication action appear to be an abuse of law. The complainant has also not put forward why this should be the case.

14. The situation has not changed significantly

14.1 If the situation changes significantly between the point in time at which the contested decision was made and the point in time at which the decision was made in the appeal proceedings, the Board of Appeal can order the continuation of the grant proceedings for this reason as well (J 4/17, No. 4.1 of the reasons; J 3 / 18, No. 4 reasons; see also J 36/97, No. 7 of the reasons).

14.2 In the present case, there is no reason for such an order to continue the proceedings. Even in contracting states in which a court decision of first instance is issued comparatively quickly, proceedings that exceed two years are not uncommon.

14.3 The uncertainty raised by the appellant about the future duration of the proceedings in addition to the previous two-year duration of the proceedings is not convincing because the national court has set a preliminary meeting for June 2, 2021, i.e. in the immediate future. The appellant's reference to the stay of the grant procedure for the related divisional application is irrelevant for the question of the continuation of the litigation, since the two procedures are independent of each other.

 

15. Result

15.1 In summary, the Legal Division rightly rejected the appellant's request to lift the stay of the European patent grant procedure and its requests to lift the notice of the notice of grant and to publish a correction of the deletion. In the balancing of interests required under Rule 14(3) EPC, the Legal Division used the relevant criteria according to the jurisprudence of the Legal Board of Appeal. It has exercised its discretion appropriately and has not exceeded its discretion.

15.2 The situation has not changed since the contested decision was issued to justify a continuation of the proceedings. If at a later point in time - for example after a first instance decision has been made that is favorable to the appellant - there are indications that speak in favor of continuing the grant procedure, the appellant is free to submit a new request at any time to continue the procedure under Rule 14(3) EPC to be submitted to the legal department of the European Patent Office.

Order

For these reasons it is decided:

The appeal is rejected.