J 0004/24 - Proceeding further kills the patent application (?)

Key points

• "Nanosteel's request to interrupt the proceedings of European patent application No. 17 867 378.6 had been motivated on the grounds that Nanosteel, although still the legal owner [of] the application, had lost the legal capacity to act on or before 5 December 2020 due [some US legal procedure/event]."
• "The applicant replied to [the Rule 70(2)/70a(2) Communication of 8 June 2020]  by letter dated 8 December 2020 [received on 9 December]. The representative of Nanosteel wrote that the applicant desired to proceed with the European patent application. No comment on the objections raised in the opinion accompanying the European search report was submitted."
• As the skilled reader may have inferred, it was a Euro-PCT application (the EPO was not the ISA) and a supplementary European search report, and the applicant did not use the former ten-day period under former Rule 126 EPC that was applicable in the case of a Rule 70(2) communication for a Euro-PCT application. 
• The EPO issues a Notice of loss of rights on 28.01.2021 for failure to reply under Rule 70a(2). This gives a two-month period for requesting further processing, expiring on 07.04.2021 (Wed), which was not used. 
• "Having received no comments on the objections raised in the opinion accompanying the European search report within the given deadline and no request for an extension of the time limit, a communication was issued by the Examining Division on 28 January 2021. With this communication, the loss of rights pursuant to Rule 112(1) EPC was notified to the applicant."
• Note that filing this formal indication of the wish to proceed further without a substantive reply to the search opinion saves one further processing fee later. 
• On 04.06.2021, the applicant files the substantive reply on the search opinion, pays the further processing fee, and requests interruption " starting from 5 December 2020 until at least 6 April 2021" and, auxiliary, re-establishment. The request for interruption is based on Rule 142(1)(b) EPC: "in the event of the applicant for or proprietor of a patent, as a result of some action taken against his property, being prevented by legal reasons from continuing the proceedings".
• The Legal Board of Appeal rejects the interruption on the ground that the letter of 8 December showed that the applicant could "continue the proceedings", according to the Legal Board of Appeal.
• "Nanosteel answered the communication of the Examining Division pursuant to Rules 70(2) and 70a(2) EPC of 8 June 2020 in letters sent on its behalf during and after the period of its alleged legal incapacity. In its letter filed on 9 December 2020, Nanosteel partially reacted to the communication when informing the EPO that the applicant wished to proceed with the European patent application."
• "The Board therefore holds from these facts, and since no evidence to the contrary was filed, that the applicant Nanosteel was not prevented by legal reasons from continuing the proceedings before the European Patent Office (see J 11/95, Reasons 5.3)."
• J 11/95: "In the circumstances of the present case, A/S Køge Stormølle (in bankruptcy) continued the proceedings before the EPO even after they had gone bankrupt in October 1990. In particular, they filed a request for entry into the regional phase before the EPO on 16. January 1992 and paid the corresponding fees. From these facts and since no evidence to the contrary has been filed it has to be concluded that A/S Køge Stormølle (in bankruptcy) was not prevented by legal reasons from continuing the proceedings before the EPO."
• As a comment, I could very well imagine that after the "US legal event" on 5 December, the professional representative could still take care of the letter on 8 December 2020. On the other hand, the missed time limit is that for filing the reply to the search opinion with further processing by 7 April 2021. The letter of the representative on 8/9 December 2020 does not conclusively prove that the applicant was not prevented from "continuing the proceedings" in the period between 28 January and 7 April 2021. Interruption is to be applied ex officio, and the Legal Board is not bound by the applicant's statement of 5 December as the starting point. Hence, submitting a letter on 8/9 December 2020 does not exclude that grounds for interruption existed at (some point) during the period of filing the reply to the search opinion with further processing, which ran from (at least) 28 January 2021 (without prejudice to the possibility of using further processing between the date of the loss of rights and the notification of the loss of rights)
• "In accordance with the case law of the Boards, bankruptcy proceedings can only lead to an interruption of proceedings when, if no specific circumstances are present, the action taken against the property of the applicant indeed makes it impossible for the applicant to continue the proceedings (see J 11/95, J 26/95 and J 11/98)."
• J 26/95:  "The decisive criterion for interruption is whether the action against the property is such as to make it legally impossible for the applicant to continue with proceedings." (underlining added)
• J 11/98: "No such special circumstances have been substantiated in the present case, which could be compared to the exceptional case underlying unpublished decisions [J 9/94] and [J 10/94], in which it was regarded as being analogous to a case of legal impossibility because the applicant, as a consequence of an action against his property, did not have at his disposal any remaining property by means of which he could have effected the required payment and where he was thus placed in a situation where it was factually and legally impossible for him to continue the procedure before the EPO, because he was devoid of any financial means whatsoever with which to pay the required actions, see decision J 26/95, point 4.5 of the reasons. "
• J 9/94: headnote in translation: "Rule 90(1)(b) EPC does not require that an action against the property of the applicant for or proprietor of a European patent be a judicial action. Where an action or actions have been taken against the property of the applicant for or proprietor of a European patent, it is appropriate to determine, in order to stay the proceedings, whether the action or actions had the effect of making it impossible for him, in fact or in law, to continue his proceedings before the EPO."
• As a further comment, this consistent case law shows that the factual possibility of acting in the procedure, does not rule out that it is legally impossible to do it and hence that there is an interrpuption. In the present case, the Legal Board does not address the issue of whether the letter of the professional representative of 8/9 December 2020, after the US legal event affecting the applicant, was legally proper. Perhaps, by bankruptcy, any power of attorney also becomes ineffective (Nemo dat quod non habet), though I would have to check national law.
• None of J11/95 (refusal to issue a priority document), J26/95 (Chapter 11 Reorganization) and J11/98 (Chapter 11 Reorganization) were about bankruptcy in the strict sense, it seems. Hence, the remark in the present decision that "In accordance with the case law of the Boards, bankruptcy proceedings can only lead to an interruption of proceedings when, if no specific circumstances are present, the action taken against the property of the applicant indeed makes it impossible for the applicant to continue the proceedings" should probably be understood as "bankruptcy proceedings in the broad sense can only lead to an interruption of proceedings when ... the action taken against the property of the applicant indeed makes it impossible for the applicant to continue the proceedings". However, then the preceding sentence in the decision is unclear: "Even if the Board agreed with the appellant that the Article 9 US UCC procedure constituted a procedure equivalent to bankruptcy proceedings, this would still not lead as such to the interruption of proceedings under Rule 142(1)(b) EPC."
• The Board does not analyse Article 9 US UCC in any detail. So we must assume that the outcome is the same as in the case that a 'classical' bankruptcy had happened on 5 December, but for whatever reason, the professional representative had still filed the letter on 8/9 December (e.g. possibly, as not being informed of the bankruptcy or similar event on 5 December).
• J26/95, J11/98, J9/94 and J10/94 concern a missed time limit for paying a fee. Interruption of the proceedings was applied in those cases. The Boards in those cases did not analyse if the applicant could perhaps have performed another action than paying a fee, e.g. filing a request for extension. It seems to me that the possibility of submitting a letter would not have negated the interruption. The implications of this observation for the present case, however, requires more study.
•  According to J 16/05 the rationale of Rule 90(1)(b) EPC 1973 (corresponding to Rule 142(1)(b) EPC) was to protect parties not able to act in the proceedings for the defined legal reasons against a loss of rights which would otherwise occur, until such time as the EPO could resume the proceedings under Rule 90(2) EPC 1973 (Rule 142(2) EPC)."" (cf. J 12/19) (underlining added)
• In conclusion, the present decision is difficult to understand. 
• It seems that no decision has been taken yet on the request for re-establishment. That is the competence of the Examining Division and the Board of Appeal in any appeal (whether it will be the Technical Board or the Legal Board, depending on whether a legally qualified examiner will be added to the Examining Division (see e.g. T1570/20). 
  
  
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EPO 

https://www.epo.org/en/boards-of-appeal/decisions/j240004eu1