T 0956/19 - No interruption of opposition period

Key points

• In edited machine translation: "Appellant I [the patentee] submits in its appeal that the oppositions of Opponents 1 and 2 [] have not been validly filed. In essence, it argues that the oppositions were filed during an interruption of opposition proceedings under Rule 142(1)(b) EPC that was subsequently identified and thus outside an ongoing opposition period. After resuming opposition proceedings, the oppositions should have been filed again within the new opposition period under Rule 142(4) EPC. Since this did not happen, the oppositions were not filed within the time limit and should therefore be rejected as inadmissible."
• The argument is creative but the Board is not convinced. "Because the interruption of proceedings under Rule 142 EPC requires ongoing proceedings before the European Patent Office. Once a European patent has been granted, it is no longer subject to the jurisdiction of the European Patent Office, unless opposition or limitation proceedings are initiated (G 1/10, OJ EPO 2013, 194, reason 6). The legally effective filing of the oppositions of Opponents 1 and 2 on January 17, 2014, the last day of the opposition period under Article 99(1) EPC, was the prerequisite for the pending opposition proceedings and thus also for an interruption of these proceedings."
• "In this respect, the statement in the letter from the Legal Division of the European Patent Office dated October 15, 2014 that the opposition proceedings were interrupted from December 27, 2013, ignores the requirement of pending proceedings. According to the correct opinion, the objection proceedings were only interrupted after the pendency by the legally effective filing of the oppositions."
• "Since the incapacity of other parties to the proceedings [other than the patentee or applicant] does not constitute a reason for an interruption, time limits which apply to these parties to the proceedings are disregarded when Rule 142(4) EPC is applied. Thus, in the case of a subsequently determined interruption, only those legal consequences that arose from the beginning of the interruption until its later determination can be considered irrelevant, which result from missing interrupted time limits that the applicant or patent proprietor or his representative had to meet."
• "Appellant I correctly states that paragraph 4 of Rule 142 EPC - unlike Rule 90(4) EPC 1973 - does not expressly refer to "time limits that apply to the applicant or patent proprietor". However, this was not intended to change the content of the suspension of proceedings before the EPO under Rule 142 EPC (explanatory notes on the revision of the Implementing Regulations, OJ EPO 2003, Special Edition No. 1, page 194: "Rules 90 to 99 EPC have been editorially revised."
• "The above interpretation also coincides with the purpose of the norm. The purpose of the interruption is to prevent a loss of rights or adverse procedural developments as a result of missing a time limit if an applicant or patent proprietor or their representative is prevented from doing so for the reasons specified in Rule 142(1)(a) to (c) EPC (essentially death or incapacity to act). The interruption thus serves to protect the applicant or patent proprietor (T 54/17, Reasons, point 1.5).'
• The oppositions are, therefore, admissible

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t190956du1.html

Admissibility of Objections

19. Appellant I submits in its appeal that the oppositions of Opponents 1 and 2 (Appellants II and III) have not been validly filed. In essence, it argues that the oppositions were filed during a suspension of opposition proceedings under Rule 142(1)(b) EPC that was subsequently identified and thus outside an ongoing opposition period. After resuming opposition proceedings, the oppositions should have been filed again within the new opposition period under Rule 142(4) EPC. Since this did not happen, the objections were not filed within the time limit and should therefore be rejected as inadmissible.

20. Complainants II and III are to be agreed that this argument by complainant I is inconsistent in its approach. Because the interruption of proceedings under Rule 142 EPC requires ongoing proceedings before the European Patent Office. Once a European patent has been granted, it is no longer subject to the jurisdiction of the European Patent Office, unless opposition or limitation proceedings are initiated (G 1/10, OJ EPO 2013, 194, reason 6). The legally effective filing of the oppositions of Opponents 1 and 2 on January 17, 2014, the last day of the opposition period under Article 99(1) EPC, was the prerequisite for the pending opposition proceedings and thus also for an interruption of these proceedings.

21. Even if the legal consequences of the interruption already result from the existence of the conditions for the interruption (in this case the opening of insolvency proceedings against Trion Pharma GmbH on December 27, 2013) and not only from their determination and registration (in this case with a letter from the legal department of the European Patent Office dated 15 October 2014 and publication in the European Patent Bulletin of 19 November 2014 (47/2014, page 977)) (see T 854/12, Reasons, point 1.1.1), these consequences cannot affect the oppositions filed in between, establishing the competence of the European Patent Office and the pendency of the proceedings. In other words, the "interruption of the proceedings" within the meaning of Rule 142 EPC cannot result in the "discontinuation of the proceedings" since this would also rule out a resumption. As appellants II and III rightly pointed out, an ongoing opposition period does not in itself constitute pending proceedings before the European Patent Office, but merely a time limit for filing them. An interruption can therefore apply at the earliest from the time the objections are effectively lodged, but this cannot be ruled out. In this respect, the statement in the letter from the Legal Department of the European Patent Office dated October 15, 2014 that the opposition proceedings were interrupted from December 27, 2013, ignores the requirement of pending proceedings. According to the correct opinion, the objection proceedings were only interrupted after the pendency by the legally effective filing of the objections.

22. Appellant I's view cannot be upheld because, as the opposition division rightly pointed out (see paragraph 1.3 of the reasons under appeal), Rule 142(4) EPC does not refer to time limits such as the opposition time limit under Article 99 (1st ) EPC is applicable, which neither the applicant nor the patent proprietor have to comply with (see, with regard to the opposition period, G 9/93, OJ EPO 1994, 891).

The wording of Rule 142 EPC already speaks for this. Paragraph 1 states the reasons for an interruption. These relate exclusively to the (lack of) business capacity or capacity to act (understood as the capacity to carry out procedural acts) of the applicant or patentee or his representative. However, the incapacity or incapacity to act of other parties to the proceedings in addition to the patent proprietor does not constitute a reason for interruption. Such parties to the proceedings are named in paragraphs 2 and 3. However, these paragraphs only state that the parties involved in the proceedings before the European Patent Office are also involved in the interruption and resumption of proceedings concerning the applicant or patent proprietor or his representative. Finally, Rule 142(4) EPC stipulates the legal consequences of an interruption of the proceedings. It follows from the overall context that Rule 142(4) EPC relates to time limits which cannot be observed because of the incapacity of the applicant or patent proprietor or his representative within the meaning of paragraph 1. These are therefore deadlines that apply to the applicant or patent owner (who is incapable of acting or has legal capacity). This is confirmed by the two exceptions, which represent deadlines to be observed by the applicant and patent proprietor respectively.

Since the incapacity of other parties to the proceedings does not constitute a reason for an interruption, time limits which apply to these parties to the proceedings are disregarded when Rule 142(4) EPC is applied. Thus, in the case of a subsequently determined interruption, only those legal consequences that arose from the beginning of the interruption until its later determination can be considered irrelevant, which result from missing interrupted time limits that the applicant or patent proprietor or his representative had to meet.

23. Appellant I correctly states that paragraph 4 of Rule 142 EPC - unlike Rule 90(4) EPC 1973 - does not expressly refer to "time limits that apply to the applicant or patent proprietor". However, this was not intended to change the content of the suspension of proceedings before the EPO under Rule 142 EPC (explanatory notes on the revision of the Implementing Regulations, OJ EPO 2003, Special Edition No. 1, page 194: "Rules 90 to 99 EPC have been editorially revised. "; see also the synoptic representation of the Implementing Regulations to the EPC 1973 and the Implementing Regulations to the EPC 2000 with explanations, OJ EPO 2007, Special Edition No. 5, page 226: "Rule 90 EPC 1973 has been streamlined and its wording conforms to the style of the EPC 2000. It has become Rule 142 EPC 2000.").

24. The above interpretation also coincides with the purpose of the norm. The purpose of the interruption is to prevent a loss of rights or adverse procedural developments as a result of missing a time limit if an applicant or patent proprietor or their representative is prevented from doing so for the reasons specified in Rule 142(1)(a) to (c) EPC (essentially death or incapacity to act). take procedural steps in a timely manner. The interruption thus serves to protect the applicant or patent proprietor (T 54/17, Reasons, point 1.5). Rule 142 EPC does not intentionally include opponents as addressees of protection: if an opponent dies or loses his legal capacity, Rule 84(2) EPC provides that that the opposition proceedings can be continued ex officio without the involvement of his heirs or legal representatives. The normative purpose of Rule 142 EPC also does not require that procedural acts of opponents that are subject to a time limit cannot be carried out with legal effect, ie within the time limit, during the period of an interruption and even have to be repeated after the interruption in order to be effective. It is sufficient to protect the patent proprietor that Rule 142(4) EPC prevents procedural acts by opponents from setting time limits for the patent proprietor during an interruption of proceedings. Therefore, the purpose of the norm also excludes an interruption of the objection period if this is still running after an objection has been filed (early) and there is a reason for the interruption.

25. For the above reasons, the oppositions filed by Opponents 1 and 2 on 17 January 2014, the last day of the opposition period under Article 99(1) EPC, were timely and valid. It is undisputed that the oppositions also comply with all other requirements of Articles 99(1) and 100 EPC and Rules 3(1) and 76(1) and (2) EPC.

26. The objections are therefore admissible. Complainant I's appeal is dismissed for this reason.