J 0006/23 - Non-existent proprietor

Key points

• In J 12/19,  the patentee went bankrupt during the first instance opposition proceedings and the proceedings were interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees, arguing that the insolvency proceedings were terminated by the patentee's dissolution, which is now non-existent. The opponent submits accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal."
• That decision of the Legal Board of Appeal was issued on 28.04.2021. 
• The Legal Division took a new decision almost two years later, issued on 01.02.2023. That decision was: "rejecting the opponent's request that opposition proceedings be resumed pursuant to Rule 142 EPC with the opponent as the sole party. " The LD intended to resume the procedure with the proprietor as a party. 
• The opponent appealed. The Legal Board issued the present decision on 05.06.2023.
• Meanwhile, the patent has lapsed in all states. 
• On the admissibility of the appeal: "the refusal in the decision under appeal to intend resumption with the opponent alone has no immediate legal consequence either. However, it creates the threat that the LD will proceed to set a date for resumption with the proprietor as well. The opponent strongly disagreeing with the latter way to proceed, it would be required to appeal such a future decision. Due to this threat, a legitimate interest in the present appeal cannot be denied."
• I don't know whether this requirement for a legitimate interest is additional to Article 106 and 107 EPC, or whether it is a way to test "adversely affected" (or "decision")
• At issue is the (releatively new) second sentence of Rule 142(2) EPC: "If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion."
• The LBA clarifies that "intends" should be read as: the EPO may set a date on which the proceedings are resumed.
•  " on the basis of the capacities that Transito NV has under Belgian law, it must be concluded that it fails both prongs of the "legal personality" test of G 3/99."
• G 3/99 r.9: "The legal personality of a named entity under the EPC is decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account." (hello DABUS, by the way, see here)
• "It follows that Transito NV no longer exist under Belgian law."
• "It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. Transito N.V. is thus not able to take part in resumed opposition proceedings. 
• "The only way to reconcile the spirit of Rule 142(2), 2nd sentence, EPC, which aims to avoid endless interruptions of proceedings in cases where no person authorized to represent the affected party can be identified, with the aforementioned principle that legal entities which do not exist cannot take part in proceedings, appears to be a resumption of the proceedings without the affected party. 
• "The Legal Board concluded above that, if the present opposition proceedings are to be continued, then they must be continued with the opponent only. The Board must therefore set aside the LD's decision expressing the view that the proceedings are to be continued with both the opponent and the registered patent proprietor Transito NV that has ceased to exist.

  It will be for the LD to exercise its discretion pursuant to Rule 142(2), second sentence, EPC in respect of a possible resumption of the opposition proceedings. If the LD exercises its discretion by resuming the proceedings, then the proceedings will take place with the opponent only until the opposition division in turn subsequently exercises its discretion pursuant to Rule 84(1) EPC. If the opposition division does so by maintaining the continuation of those proceedings, then the opposition division will be bound by the LD's decision to continue them with the opponent only."

• I don't think the LD can arbitrarily keep the procedure interrupted, but we may have to see if the opponent has to appeal on that point as well. 

• I assume the opponent has requested that the proceedings be continued under Rule 84. We will have to see if the OD accedes to this request, or if the opponent will have to file an appeal on that point as well. 

EPO 

The link to the decision is provided after the jump.

J 0002/22 - Interruption of proceedings

Key points

• There is a lot going on in this decision. The applicant is a natural person living in London and acting without a professional representative.
• The application was filed as a PCT application. The applicant entered the European phase late, with further processing. More precisely, he filed Form 1200 on the last day of the period for requesting further processing, using web-form filing. The fees were received by the EPO on 18 October. 
• The EPO issued an invitation under Art.7(3) Rfees on 21 November 2019 to file evidence that payment was initiated on 16 October and pay the (then applicable) surcharge. 
• "With e-mails of 2 January 2020 and 24 January 2020 the appellant was reminded of the deadline to reply to the communication of 21 November 2019 concerning fee payment."
• This is remarkable because email is officially not a permitted means of communication in procedures (still).
• "On 23 April 2020, the appellant submitted a written confirmation by his bank XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, but had only been sent two days later."
• I understand the EUR 150 surcharge was paid. 
• "Such evidence was indeed provided, if only on 23 April 2020, by a written confirmation of XXX of 11 March 2020 that the payment of fees had effectively been requested on 16 October 2019, and that it had been sent only two days later, i.e. on 18 October 2019 (notably because of initial doubts on the bank's side that such payment has indeed been the appellant's intention)."
•  "In a telephone consultation on 13 July 2020 with a Formalities Officer, the appellant announced that he had meanwhile "found" the communication of 21 November 2019."
• "Upon an internal investigation, receipts of 25 November 2019 were unearthed, signed by the appellant, confirming handover of the communications of 21 November 2019 to him."
• This is remarkable. I wonder what kind of documents these are that are not included in the file but are only "unearthed" later.
• " With a further communication of 20 October 2020, the Receiving Section informed the appellant that notifi cation of the communication of 21 November 2019 had thus been duly effected, and the time limit for reply ing thereto had expired on 3 February 2020, so that his response of 23 April 2020 had (finally) been too late. The Receiving Section announced their intention to issue a decision rejecting the request for further pro ces sing, and gave the appellant the opportunity to respond within two months. "
• The spurious spacing in the text is from the HTML publication of the decision. 
• " By fax of 4 January 2021, the appellant responded, inter alia stating that he had made the necessary payment on the due date of 16 October 2019, but it had been delayed for two days by his bank, for reasons outside his control. He had been diagnosed with a serious medical condition which had the effect that he could enter fairly suddenly and without warning into periods of diminished cognitive capacity, making ma nage ment of day-to-day correspondence difficult. One such episode occurred late 2019 and into early 2020. It was during this time that the communication of 21 No vember 2019 was sent but due to his health difficulties at that time he was not aware of its arrival and the dead line set therein. [....] He pointed at Rule 142 EPC, according to which the pro ceedings should be interrupted in case of legal incapacity. 
• 4 January 2021 was indeed the first Monday after the EPO's end-of-year closing and hence the last day of the period from 20.10.2020.
• It is remarkable that the pro se applicant points to Rule 142 EPC, a rule that could be easily overlooked even by some EQE candidates.
• The Board finds that proceedings are retroactively interrupted from 21 November 2019, so that the invitation under Rfees7 was not validly notified. 
• At least that is how I understand point 2 of the order; see also para. 35 of the reasons.
• "the valid notification on a natural person as party to the proceedings presupposes their legal capacity (cf. Rule 142(1)(a) EPC; as to the term and the conditions see below). The notification on a legally incapable person who is not properly repre sen ted is null and void, as are other procedural acts involving or regarding them (cf. Articles 467, 468, 473 and 475 French Civil Code (FCC); 170 German Code of Civil Procedure (ZPO), 1(1), 6 Austrian Code of Ci vil Procedure (ZPO); cf. Austrian jurisprudence, see Le gal Information System of the Republic of Austria ,,RIS-Justiz" RS0006948, RS0122203, RS0083724). '" 

A uniform standard for legal incapacity of applicants?

• "Legal incapacity of a person means that they are suffering from a disturbance of their mind which makes them unable to form the necessary voluntary intention to carry out legal transactions binding upon them, e.g. to make valid contracts (Case Law of the Boards of Appeal, 10th ed. 2022, III.D.4.3; J 900/85, OJ 1985, 159). In the context of the procedural system of the EPC, which does not distinguish between civil and proce dural legal capacity (see below), this also means that they cannot act on their own in proceedings before the EPO."
• "The Boards' jurisprudence in this context tells the standards regarding (private) natural persons (i.e. based on the relevant national law) apart from those regarding professional representatives (i.e. a uniform standard based on the autonomous law of the EPC, see Case Law III.D.3.2 and III.D.3.4[...]); J 900/85; J 903/87, OJ 1998, 177)."
• The present Board: "However, there is no stringent reason for making such a distinction, at all, and as to why the principles laid out in J 900/85 for professional representatives should not equally apply to natural persons, i.e. the assess ment be made on the basis of the autonomous law of the EPC"
• I've studied the Travaux to Rule 90 EPC 1973. A relevant passage can be found in 7669/IV/63, page 63, with a discussion of a fundamental difference between French, Dutch and Belgium law on the one hand and German law on the other hand, relating to legal incapacity of natural persons (page 43 of the PDF); concluding on p.64, first paragraph, last sentence, that 'the personal statute' applies in the sense of private international law, i.e. the law of the country of residence.
• The EPO no longer has the individual PDF files of the Travaux on their website, only large ZIP files with collections of files. I can not link to the relevant document or page anymore.
• As a comment, the Legal Board seems to follow the German approach to legal incapacity. There could be valid reasons for doing so, but that is beyond the scope of this blog post.
• "only unified standards according to the autonomous law of the EPC can guarantee equal treatment of the parties in proceedings before the EPO, as an essential element of fair trial"
• So, an applicant/natural person can be 'mentally fit' to conclude contracts under the national law of his/her place of residence and still 'unfit' in the procedure before the EPO, according to this decision.

The facts of the case

• In the present case, the appellant himself ... to support the request for interruption of the proceedings - had put his health issues on the table, together with me di cal documentation: the medical certificates of 3 April 2020, of 26 October 2020, and of 13 September 2021, all from the N.N. Medical Centre. Already according to them, the appellant suffered from a number of medical conditions, specifically recurrent depres sion, PTSD and dissociative seizures, and he had a tendency to experience several months long episodes where he was in a major depressive state, leaving him often unable to leave bed
• "Given the circumstances of the case and the evidence already on file at first instance, the appellant's legal capacity could no longer simply be presumed without further investigation and, in the absence of further medical evidence to the contrary, he could no longer be treated like any other party presumed to be able to act validly in the proceedings on their own, and without proper representation."
• "As the appellant is domiciled in London, the board ap proached the Court of Protection, in particular, which has a main office in London and regional hubs and is responsible for a range of decisions in financial and welfare matters for people in England and Wales who lack mental capacity. "
• " Reaching out to the Court of Protection, and the Office of the Public Guardian (an administrative and super visory body to the Court of Protection, see Part 2, Section 57, of the Mental Capacity Act 2005), did not return any responses. "
• "These further documents, atop the medical documentation already on file, and in the light of the appellant's be haviour and submissions in the proceedings, finally provide sufficient evidence to conclude that the appel lant did not possess legal capacity during a substan tial part of the proceedings, and that this problem per sists to date. In view thereof, further investi ga tions into the appellant's state of health, or even an ex-officio medical examination, could be dispensed with, at least for the time being."

Effects of the interruption

• "as outlined above, the notification of the Receiving Section's communication of 21 November 2019 is null and void, since the appellant was in a state of legal incapacity at that time, and is there fore without effect. The same applies to the entire sub sequent proceedings, i.e. the procedural steps taken by the departments of first instance and the appellant since then. This includes, in particular, the contested decision and its notification.
• These proceedings are thus (to be declared) null and void, with the consequence that the impugned decision is deemed to have never become legally effective. 

Declaration of interruption by the Board

• "The declaratory decision on interruption is to be taken by the board, and there is no room to involve the Legal Division at this stage"
• "The Deci sion of the President of the EPO concerning the res ponsibilities of the Legal Division of 21 November 2013, OJ 2013, 600, did not transfer any powers and competences from the Boards of Appeal to the Legal Division on the basis of Rule 11 EPC ("allocation of duties to the departments of first instance"), but only concerned the allocation of functions between these first-instance departments. "

Further procedure

• "In view of XXX's confirmation, it can be con cluded that the payment of the fees for further processing was made, and that the omitted acts were also completed, in due time. There is no harm in the fact that this confirmation was only submitted on 23 April 2020, outside the two-month deadline set out in the communication of 21 November 2019, since the notifi cation of that communication being null and void could not have triggered such deadline."
• Consequently, the request for further processing was validly made and further processing will have to be granted in the continued proceedings before the first instance. The legal consequences of Article 121(3) EPC will then apply and the proceedings at first instance will have to be further continued by dealing with the appellant's requests for entry into the European phase and for examination by the EPO as designated Office, which were validly filed on 16 November 2019, together with the request for further processing.
• " The UN Convention on the Rights of Persons with Disabilities, having been ratified by the Contracting States of the EPC, and the EPOrg Extension and Validation States, provides:"
• This seems to be an example of the systemic interpretation of the EPC; see the article of McLachlan discussed here (to cite: "This article starts from the proposition that Article 31(3)(c) [VCLT] expresses a more general principle of treaty interpretation, namely that of systemic integration within the international legal system. The foundation of this principle is that treaties are themselves creatures of international law. However wide their subject matter, they are all nevertheless limited in scope and are predicated for their existence and operation on being part of the international law system.")
• "Accordingly, national legal systems sport a variety of safeguards that persons protected by the Convention can enjoy equal access to justice. Notably, there are various mechanisms to ensure that persons lacking legal capacity can participate in legal proceedings through the appointment of (legal) representatives."
• " The appellant is in fact habitually resident in London. The system for dealing with legal incapacity in England and Wales revolves around the Court of Protection, based on the Mental Capacity Act 2005, which can, inter alia, appoint a "deputy" (for property and financial affairs or for personal welfare) to make decisions on behalf of a person who has lost legal capacity ("pro tected party"), and to also represent them as their "litigation friend" in any proceedings to which the deputy's power extends "
• " this system does not appear to provide for an easily accessible procedure for the appointment of a representative at the request of other persons or institutions, or even authorities such as the EPO, without specific permission from the court "
• "The appointment of a deputy as the appellant's liti gation friend/legal representative in accordance with the national procedures of the Court of Protection and with a view to representing him in the present proceedings before the EPO would have been the preferred option under the EPC (cf. Rule 142(1)(a) EPC "... or the person authorised by national law to act on [their] behalf")."
•  I think this part of Rule 142 EPC addresses one of the possible grounds for an interruption, and does not relate to the manner of appointment of a representative of a natural person with mental health problems. Hence, the quote 'cf.' is correct but not very helpful. 
• "Since the appellant is in a state of legal incapacity, as outlined in detail above, he could not validly authorise them directly as his representatives of choice "
• " For the time being, therefore, there is thus no al ternative to the EPO themselves appointing a represen tative, in particular the competent department of first instance, and thus resuming and continuing the proceedings before them."
• "Rule 151(2) EPC provides for the appointment [by the EPO] of a com mon representative for a multitude of applicants, in certain circumstances. The concept of the appointment of a representative for legal proceedings is thus in herent in the system of the EPC, and can, as a matter of principle, be applied to any case such as the present one, where a representative is essential to gua rantee the participation of a legally incapable person as party and thus a fair trial. Such an appoint ment by the administrative or judicial authority of the proceedings is also in accordance with the principles of procedural law generally recognised in the Contracting States to the EPC (see Article 125 EPC)."
• "On this basis, the competent department of first in stance will have to appoint a representative and continue the proceedings. "
• Which is interesting. The Legal Board could perhaps have clarified if this also means that the EPO will pay the invoices of the solicitors or patent attorneys. 
• The procedure will now be resumed under Rule 141(2) (by analogy) once the EPO has appointed the representative. 
• Unlike a court-appointed guardian of a mentally ill person, the EPO-appointed representative will not manage the applicant's bank account (as I understand it) and will not receive a court-approved renumeration. 
• I also wonder when the appointment of the EPO-appointed representative will lapse. I assume when the mental state of the applicant improves to above the threshold of Rule 142(1)(a)? (Incidentally, see his calculation of 4 January 2021 as the last day of the period mentioned above, cf. point 37 of the reasons). 
• I wonder whether the application of Rule 151(2) by analogy is the solution envisaged in Rule 142 for the case of lack of a representative. Rule 142 was amended in 2020 to clarify that the proceedings are resumed once "the European Patent Office has been informed of the identity of the person authorised to continue the proceedings" and " If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion." 
• It is also unclear to me if, under Rule 151(2) EPC which is about multiple applicants, the EPO appoints a professional representative or one of the applicants as the common representative. 

Remedies for Rfees7(4)

• Further processing is not explicitly excluded, nor re-establishment, but there is some old case law stating that the Rfees are 'outside' the EPC (in a case about a debit order filed in Dutch (J170/83). However, meanwhile, it is clear that Rule 139 EPC applies to debit orders (J8/19). Singer EPÜ, notes to the Rfees, is silent on it. 
• The period of Rfees7(4) is specified by the EPO, the applicant could have requested extension of the period before it expired.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0967/18 - Interuption of proceedings

Key points

• The proprietor appeals the decision of the OD issued on 05.02.2018.
• "the patent proprietor informed the EPO's Legal Division by submission dated 19 July 2019 that ... an  external administrator for [the then proprietor] had been appointed on 26 September 2016 as part of the company entering voluntary administration."
• The grant was published on 10.02.2016, avoiding a few other procedural complications.
• "The EPO's Legal Division informed the patent proprietor - with the communication dated 26 July 2019 - that the opposition proceedings had been interrupted in accordance with Rule 142(1)(b) EPC with effect from 11 November 2016 and that the proceedings would be resumed on 4 November 2019."
• The opponent filed an appeal against the decision of the Legal Division to not set aside the communication of 26.07.2019, case J 9/21 (post). The Legal Board dismissed the appeal because " it is not possible to set aside a declaration of interruption by the Legal Division with retroactive effect, not even if it was declared erroneously (for an interruption see T 1389/18, Reasons 6, and J 10/19, Reasons 4 to 13; for a stay see J 14/19, Reasons 3.5, with further references). "
• The present Board: "As correctly explained by the Legal Board of Appeal (J 9/21, Reason 3.3), in accordance with previous decisions of the boards, where the proceedings have been interrupted under Rule 142(1)(b) EPC, acts done by the parties or the competent body of the EPO during the period of interruption are considered "invalid"."
• "the appeal and the appeal proceedings have no valid subject eligible for judicial review. In line with established case law, an admissible appeal requires the existence of an appealable decision. Thus, the appeal in question must be regarded as not satisfying the requirements set out in Article 106(1) EPC. Hence, the board considers the appeal to be inadmissible."
• The Board refuse the requests for apportionment of costs. As to the conduct of the proprietor: "there is no evidence of an abusive behaviour of the patent proprietor. The patent proprietor did not request an interruption. The latter was ordered ex officio by the Legal Division under Rule 142(1)(b) EPC, after the patent proprietor had requested the registering of a change of ownership. It is not apparent that the patent proprietor was aware that the request for the change of ownership with the relevant information concerning the voluntary administration would have triggered an interruption of the proceedings. There is no evidence that the patent proprietor was aware that the legal situation created under Australian law required an interruption in the EPO proceedings. There is also no evidence that it deliberately waited for the outcome of the opposition proceedings to provide information which would have led to an interruption."
• "the board is not convinced that the failure to recognise the implications of the entry into voluntary administration for the EPO proceedings constitutes a serious and gross lack of diligence on the part of the patent proprietor. As the proceedings before the Legal Division and the Legal Board of Appeal confirmed, a complex analysis was required to properly assess the legal consequences."
• The OD can now open the file again on this patent with a filing date in 2009.

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

J 0009/21 - Interruption of proceedings

Key points

•  The OD revoked the patent on 05.02.2018. The proprietor appeals. On 19.07.2019, the proprietor informed the legal division that an external administrator had been appointed on 26.09.2016 (!).
• " the Legal Division declared that the opposition proceedings had been interrupted as from 11 November 2016 (i.e. as from the day after the expiry of the opposition period) and that the proceedings would be resumed on 4 November 2019. By submission dated 24 October 2019, the opponent requested that the Legal Division set aside the interruption of the proceedings or, alternatively, that it set 21 February 2017 as the date of resumption of the proceedings. After issuing a communication and holding oral proceedings, the Legal Division issued the decision under appeal."
• "the Board agrees with the finding in T 1389/18, Reasons 4, that the Legal Division has the power to determine an interruption of the proceedings, which was as a result also confirmed in J 10/19, Reasons 6."
• I.e. even during a pending appeal. 
• "The Legal Division's finding in view of the documents annexed to the respondent's submission dated 19 July 2019 that an external administrator was appointed in line with the provisions of the Australian Corporations Act was not contested by the appellant. Under the Australian Corporations Act, a company may be placed into external administration if it is experiencing financial problems. In such a situation, an external administrator may, as in the present case, be appointed voluntarily by the company's directors, or involuntarily by its creditors. In both cases, the interests of creditors are involved. "
• "Once appointed, voluntarily or involuntarily, according to Section 437D of the Australian Corporations Act only the external administrator can deal with a company's property. Any transaction or dealing affecting company property is void if it is not entered into or consented to by the administrator (unless the transaction or dealing was entered into under an order of the court). This also corresponds to the external administrator's letter to the former patent proprietor's solicitor dated 29 September 2016, in which he stated that all active files and actions now "fall under my control".
• "the mere fact that there was no bankruptcy judgement and that the former patent proprietor entered voluntarily into external administration under the Australian Corporations Act does not speak against the application of Rule 142(1)(b) EPC in the present case. Rather, as the disputed patent was part of the former patent proprietor's company property at the relevant point in time, the former patent proprietor was indeed "prevented by legal reasons from continuing the proceedings" within the meaning of Rule 142(1)(b) EPC. The Board also notes that the company placed into external administration was ultimately liquidated."
• "If the relevant conditions are fulfilled [as is the case], an interruption of proceedings under Rule 142(1)(b) EPC occurs directly by operation of law. Hence, the Legal Division's communication dated 26 July 2019 on the interruption of proceedings was not constitutive in this regard; rather, it only had declaratory effect (see T 854/12, Reasons 1.1.1)."
• "the effect of an interruption of proceedings is not limited to certain periods being interrupted as specified in Rule 142(4) EPC. Rather, after the interruption has taken effect, procedural acts undertaken by the parties which do not concern the situation created by the interruption - like in the present proceedings the question of whether there actually was an interruption - are invalid. The same principle applies to acts, including decisions, taken by the EPO during the time of interruption."
• "Whether or not the patent proprietor continued the opposition proceedings factually during the period of interruption is irrelevant under Rule 142(1)(b) EPC, as this provision is only concerned with whether the patent proprietor was legally able to continue the proceedings (see T 1389/18, Reasons 8, last sentence). [...] The interruption of proceedings under Rule 142(1)(b) EPC by force of law rather ensures that acts undertaken by applicants or patent proprietors which continue the proceedings even though they are not legally allowed to do so are invalid - and therefore cannot be detrimental to the legitimate interests of third parties."
• The Board found that abuse of procedure by the patentee was not evident. The patentee's letter of 19.07.2019 was not intended as a request for an interruption but submitted in the context of registration of an assignment, as I understand the decision. 
• The Board recalls that " Whether proceedings "shall be interrupted" under Rule 142(1)(b) EPC is not a discretionary decision of the deciding body (J 18/12, Reasons 10). Rather, an interruption of proceedings only depends on whether or not the conditions referred to in Rule 142 EPC are met"
• " it is not possible to set aside a declaration of interruption by the Legal Division with retroactive effect, not even if it was declared erroneously (for an interruption see T 1389/18, Reasons 6, and J 10/19, Reasons 4 to 13; for a stay see J 14/19, Reasons 3.5, with further references). "
• "the present Board notes that it seems to follow from the aforementioned case law that the effects of an interruption under Rule 142(1)(b) EPC can come into existence not only as a matter of law at the time of, and due to, the fulfillment of the conditions for an interruption under Rule 142(1)(b) EPC, but also - and in such cases indeed retroactively - through an erroneous declaration of interruption by the Legal Division."
• The Board notes that in some cases, the Legal Division must hear the parties before declaring an interruption. "This is particularly so if (almost) entire opposition proceedings have been conducted during the relevant period. In such cases, the expected legal consequences of the interruption may indeed require the Legal Division to hear the parties before issuing a declaration of interruption."
• " In T 1389/18, Reasons 7, it was accordingly held that the decision announced by the opposition division during the period of interruption was null and void. In the present case, it will be up to the Technical Board of Appeal in case T 967/18 to assess this matter."

EPO  J 9/21

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

T 0956/19 (I) - (I) 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.

T 0007/17 - Transfer of opposition and appellant in liquidation

Key points

•  A company requests that “the party status as opponent be transferred to it - and with it the opponent's procedural status as appellant in the appeal proceedings”. The Board rejects the request. 
• The Board first gives a concise but very useful review of established case law regarding the transfer of opposition.
• “The requirements for a transfer of party status as appellant-opponent [of G4/88] are not met since the board considers it not sufficiently proven that all relevant business assets in the interests of which the opposition had been filed had been transferred to Benuvia Therapeutics Inc., nor that the opposition was transferred.”
• “The board considers that it is on the opponent or the third party seeking the party status as opponent to prove that all assets had been transferred in the interest of which the opposition had been filed. ”
• “Schedule 5.8(a) [of the agreement] lists various patent filings made by the appellant-opponent or its affiliated companies and patents under which licence rights had been granted to them. According to D44, the transfer of any patent-related asset was dependent upon execution of the Patent Assignments. ... While the two Patent Assignments D46 and D47 show that all the listed patent filings had indeed been assigned to Fresh Cut Development, LLC or Benuvia Therapeutics Inc., respectively, no evidence was provided in relation to the licence rights.”
• “On the basis of the submissions and evidence filed, the board could not establish that the licence rights listed in Schedule 5.8(a) as part of the CBD business assets had indeed been transferred by the appellant-opponent, and it thus had to conclude that these business assets remained with the appellant-opponent, i.e. Insys Therapeutics, Inc. ... Where only part of the assets in the interests of which the opposition had been filed - here the CBD business assets - were transferred, the requirements set by the Enlarged Board of Appeal in its decision G 4/88 (cited above) cannot be considered to be met. In such a case, the original opponent remains party to the proceedings.”
• “the board likewise does not consider it proven that the opposition was transferred under the Agreement D44. ... The board does not agree with the main line of argument of Benuvia Therapeutics Inc. that the opposition, in case of a transfer of all business assets in the interest of which the opposition had been filed, is transferred with the transfer of these assets under all circumstances. The board takes the view that this does not occur automatically.”
• This may be an important point. The present Board 3.3.01 here follows T 0234/18 of Board 3.5.02.  
• The Board, explaining the point: “where a company contractually transfers the business assets in the interests of which an opposition had initially been filed, it is a matter of the parties' agreement whether or not the opposition - i.e. the party status as opponent - is transferred together with these business assets.”
  
• The Board, in further explanation: “To the contrary, the wording chosen by the Enlarged Board of Appeal [in G 4/88] ("may be transferred" and "transferable or assignable") makes it clear that the decision specifies the conditions under which a transfer of the opponent status is possible. Thus, decision G 4/88 does not envisage an "automatic" transfer of the opponent status in cases of a contractually agreed transfer of the business assets in the interests of which the opposition was filed (see also T 1911/09, Reasons 2.1.2 and T 1421/05, Reasons 3.2 ff).”
• The two referenced decisions deal with the point that in case of a transfer of an opposition with business assets, i.e. not by universal succession, the party status of opponent only changes after filing a request with the EPO and sufficient evidence. This is a different point than decided here (as the present Board seems to acknowledge in fact).
  
  
• “The oral proceedings took place in the absence of the appellant-opponent, Insys Therapeutics, Inc. Even though professional representatives attended the oral proceedings for the appellant-opponent, they were not entitled to act on behalf of the appellant-opponent because they had not submitted an authorisation, despite the board's earlier invitation to do so.”
• The professional representatives were allowed to argue that the invitation to submit an authorization was not proper under Article 1(1) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations (OJ EPO 2007, Special edition No. 3, 128. The Board rejects the arguments for the reason that the appellant-opponent was in liquidation so the Board had doubts. 
• “In the communication dated 6 July 2021, in the sections preceding the board's invitation to file an authorisation, the board explained its doubts that the appellant-opponent, being a company in the process of liquidation, was able to act without the involvement of the liquidator. The board therefore saw the need to ascertain that the professional representative was indeed empowered to act and thus invited the professional representative to file, within two months of notification of the communication, a signed authorisation in which, in particular, the capacity of the person signing should be stated.”
• Interruption of proceedings, Rule 142, does not apply to opponents of course.
• “ Regarding to whom notifications are to be addressed under Rule 130(1) EPC, the legal situation on the date of issuance of the communication is relevant (see J 19/92, Reasons 4 and T 247/98, Reasons 1). While Rule 152(6) EPC creates the legal fiction that if a required authorisation is not filed in due time, any procedural steps taken by the representative are, as a rule, deemed not to have been taken, this does not relate to the steps taken by the EPO.”
• “the appellant-opponent had to be considered as not being represented at the oral proceedings. In order to avoid any further procedural delays, the board decided, in accordance with Rule 115(2) EPC and Article 15(3) RPBA 2020, that the proceedings be continued in the appellant-opponent's absence, and the party was treated as relying on its written case”
• “The request of the appellant-opponent's representatives, submitted at the oral proceedings, that the proceedings be postponed so that the appellant-opponent could file an authorisation was rejected.”
• The appellant-opponent was in liquidation. 
• “The board takes the view that in the circumstances of the current case in which the board had to conclude that the appellant-opponent no longer has capacity to act in the appeal proceedings and where this issue had been a contentious one, albeit in the context of a transfer of party status, a decision is to be taken on the admissibility of the appeal (similar to in T 2136/11, Reasons 4 to 6). Thus, based on the findings above, the board holds that the appeal is to be rejected as inadmissible.”
  
  
• Also interesting: “Communication by the board dated 6 July 2021 indicating that the determination whether a legal entity existed or had ceased to exist and had capacity to act was a matter of national law and that in cases such as this where the answer was to be found in laws foreign to the EPC and its contracting states, it was for the parties to provide evidence of the legal provisions which they considered relevant. ”

EPO

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

J 0007/20 - Rule 142(1)(c) and heavy snow

 Key points

• This is a sad case. The petitioner for review was not able to attend the oral proceedings before the Board because all flights were cancelled due to a snowstorm. "Oral proceedings [before the Enlarged Board] were scheduled to start at 10:30 hours on [Monday] 4 February 2019. The representative did not appear. In the course of the day, beginning at 10:22 hours, employees of his association informed the Enlarged Board, by telefax and telephone, that he [i.e. the representative] would not attend due to cancelled flights; there was however no request for postponement of the hearing. 
  The Chair opened the oral proceedings at 12:30 hours and closed them at 12:48 hours, after having announced the unanimous rejection of the petition as clearly inadmissible (for want of a Rule 106 EPC objection)." [see here; R7/18]
  
• " Later that day [04.02.2019], the representative informed the Enlarged Board by telephone that he had tried to contact Mr. [C] by telephone the whole day, and had also sent him an email, unaware of Mr. [C]'s recent retirement from the duty as the Enlarged Board's registrar [note: on 31.01.2019]. The representative's office then forwarded to the Enlarged Board the email, originally sent at 7:53 hours, which indicated his non-attendance at oral proceedings due to cancelled flights, and his wish to have the hearing rescheduled." 
• A more detailed review of the facts can be found here. There is certainly a practice point to be learnt from the case. 
• Now turning to the present appeal: " After the Enlarged Board had dispatched its decision rejecting the petition for review in writing, the proprietor directed itself to the Legal Division and "request[ed] interruption of the proceedings" with effect from the day prior to the hearing before the Enlarged Board" 
• The Legal Division refused the request. The requester appeals.
• The Legal Board: "If this appeal were successful, the decision of the Enlarged Board would have no legal effect, as it would have been handed down while the proceedings were interrupted (cf. T 1389/18). " 
• As a comment, T1389/18 decided so for a decision of an opposition division, but indeed the same principle applies to a decision of the Enlarged Board on petitions for review, as held in the present case, and by implication also to decisions of the Boards of Appeal.
• The requester, formerly petitioner for review, is the patentee. The Legal Board, on the status of the opponents in the present appeal: "thus, the appeal proceedings may adversely affect the legal position of the opponents. They are therefore considered parties to these proceedings (cf. J 12/19, reasons 2.2.3 and 2.3).' 
• The question is whether the undisputed facts qualify as legal incapacity of the representative in the sense of Rule 142(1)(c) EPC. 
• " Under the established case law of the Boards of Appeal, legal incapacity of the representative relates to the mental state and rationality of the representative. The mental state from which such incapacity can be derived has to be such that the representative is so totally or nearly totally unable to take rational decisions that all its professional duties, and not just an isolated case, are affected. To assess the representative's mental state, a reliable medical opinion is indispensable "
• The Legal Board confirms that the list of events in Rule 142(1)(c) is exhaustive.
• "the Legal Board agrees with opponent 1 that absurd cases could follow in case unfortunate, unforeseen events would generally constitute legal incapacity and trigger the radical mechanism of Rule 142(1)(c) EPC. The example of a representative temporarily caught in a traffic jam is not unthinkable." 
• "the Legal Board can but firmly note that the mental state of a representative and the total or near total inability to take rational decisions are something completely different to the external, practical and one-off kind of events - inter alia heavy snow, cancelled flights and failed communication - adduced by the proprietor as hindering the representative in the current case. These events do not constitute "legal incapacity of the representative"."  
• Finally, "there is no lack of procedural provisions in the EPC which would prompt application of Article 125 EPC, as suggested by the proprietor." 

J 0012/19 - The other party under Rule 142

 Key points

• The patentee went bankrupt during the first instance opposition proceedings and the proceedings are interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees as it considers that the insolvency proceedings were terminated by the dissolution of the patentee, which is now non-existent, according to the opponent. The opponent submits so accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal.
• Rule 142(2) reads in relevant part: “When, in the cases referred to in paragraph 1(a) or (b), the European Patent Office has been informed of the identity of the person authorised to continue the proceedings, it shall notify such person and, where applicable, any third party, that the proceedings will be resumed as from a specified date”.
• The opponent files an appeal and a statement of grounds against this Communication. After some months and some exchange of submissions with the EPO, the appeal is forwarded to the Legal Board.
• To jump to the conclusion, the Legal Board decides to set aside the impugned decision and remits the case to the Legal Division. Hence, the Legal Board decides that the opponent is a party to the ‘resumption proceedings’, in the same way as an opponent is a party with respect to a request for re-establishment of rights filed by a patentee and hence must be heard under Article 113(1) EPC on the request for re-establishment of the other party (T552/02, CLBA III.E.6.3).
• “The opponent (appellant) is party to the resumption proceedings. As a consequence, the Legal Division's denial of the appellant's party status to the resumption proceedings in the impugned decision, entitled communication, of 15 March 2019, was unlawful. It follows that the division's failure to consider the observations and requests submitted by the opponent on 5 February 2019 was equally unlawful.”
• The Legal Division accordingly has to take a new decision on the resumption of the proceedings. Possibly the new second sentence of amended Rule 142(2) has to be applied. Accordingly, retroactively the opposition proceedings are still stayed.  
  
  
• Now for the preliminary matters: first, whether the appeal complies with Art.106 requiring that it is filed against a ‘decision’: “Under established case law of the boards of appeal, whether a document constitutes a decision or not depends on the substance of its content and not on its form [] the decisive question was whether the document at issue, when objectively interpreted in its context, could have been understood by its addressees as a final, i.e. not merely preliminary, and binding determination of substantive or procedural issues by the department ("organ") of the EPO which has jurisdiction ("is competent"). The Board shares this view, with the proviso that even a document issued by a department of the EPO that does not have jurisdiction may constitute a decision.
• “The impugned "communication" of 15 March 2019 thus constitutes a final, binding determination of procedural issues by a department of the EPO, i.e. the appellant's party status and the resumption of proceedings. The "communication" therefore is a decision in the meaning of Article 106(1), first sentence, EPC.”
• As to whether the opponent is a 'party' in the sense of Article 107: “the Board shares the appellant's view that although it was not recognized as a party by the department of first instance that rendered the impugned decision, this should not affect the admissibility of the present appeal, since the denial of party status is subject of the appeal. Otherwise, there would be no legal remedy against an incorrect denial of party status by a first-instance department.”
• An interesting exercise could be to compare this to G2/19 hn.1.
• On the date of filing the Notice of appeal, the opposition proceedings were interrupted. This does not affect the admissibility of the appeal in this particular case. “Reason for this is that, as stated, the proceedings before the Legal Division relating to interruption and resumption of the opposition proceedings before the opposition division are intermediate proceedings in relation to the opposition proceedings. Procedural acts filed during the period of interruption of the opposition proceedings may have no legal validity. But the same cannot be said in relation to the proceedings before the Legal Division, simply because they are not interrupted but, rather, meant to determine the end of the interruption of the opposition proceedings.”
• The Board calls it 'intermediate proceedings'. The GL appear to use 'ancillary proceedings' as a general term for such ancillary matters (D-II 4.3), albeit for matters that the opposition division is competent to decide on. Moreover, the decision of the Legal Board does not seem to discuss Article 106(2) EPC (“A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.”). Because the opposition proceedings are not terminated, it is not immediately evident that the Communication is appealable under Article 106(2) EPC.  This turns on an interpretation of the term “proceedings” under Article 106(2) EPC.
  
  
• The Legal Board held oral proceedings but had the difficulty that the summons were not successfully delivered to the patentee (according to the opponent, that made sense, as the patentee was dissolved and non-existent in their view). The Board used public notification in the Bulletin on 25.11.2020 for oral proceedings held on 01.02.2021. 
• Under Rule 129(2), notification is deemed to be effected one month later, i.e. 25.12.2020. This is interesting because Rule 115(1) specifies a minimum period of two months notice of the summons, I assume calculated from the notification of the summons. Probably I overlook something, comments from readers are welcome. 

J 0012/19 -  J 12/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/j190012eu1.html

Summary of Facts and Submissions

I. The opponent's appeal filed on 21 March 2019 is directed against the document entitled "Communication from the Legal Division" of 15 March 2019 "to deny the Opponent (present Appellant) party status in the proceedings pursuant to Rule 142 and its resulting refusal to consider the observations and requests submitted by the Opponent on 5 February 2019..." (see notice of appeal, page 1). This is the text of the document:

Reference is made to your letter of 05.02.2019 received on the same date at the EPO. The Legal Division informs you [i.e. the appellant] as follows:

Please note that you are not party to the proceedings pursuant to Rule 142 EPC. As a third party to these proceedings, you may file neither observations nor any procedural requests.

Opposition proceedings relating to the European patent No. 2 393 977 will be resumed on 01.04.2019. The opposition division as the competent organ will decide on the further conduct of said opposition proceedings.

(Emphasis added.)

The appellant requested that the Board "set aside the Legal Division's denial of the Opponent's party status, its refusal to consider the observations and requests submitted by the Opponent on 5 February 2019, and the resulting implicit confirmation of the announced resumption of the opposition proceedings with Transito NV as the proprietor of the patent under opposition".

J 0010/19 - Interruption of proceedings

Key points

• This is an opposition case with interruption of proceedings due to insolvency of the joint proprietor. The case is procedurally difficult. 
• A share of the patent right was transferred to Solar World GmbH on 11.07.2017. This company was declared insolvent on 01.08.2017. Oral proceedings before the OD took place on 12.09.2017. The OD decided that the patent in amended for met the requirements of the EPC, written decision dated 06.11.2017. The EPO was informed about the insolvency in the course of other proceedings and issued the interruption on 04.01.2018 with retroactive effect to 01.08.2017.
• With decision T 1389/18 of 17.12.2018, the Board had dismissed the appeals of the opponent and the patentees against the decision of the OD as moot because the OD's decision was non-existent due to the interruption.
• The patentees requested on 25.01.2018 that the interruption decision be set aside, alternatively that the date of resumption of the proceedings is set on 08.08.2017.
•  The Legal Board of Appeal reasons that the declaration of the interruption of proceedings because of insolvency of the patentee is retroactive. However, it can only be cancelled with ex nunc effect. Cancelling with retroactive effect is also not possible in individual cases after balancing the interests of the parties. Rather, whether or not cancelling with retroactive effect is possible is question of law that needs to be answered in the general (my summary of the headnote).
• The Legal Board: “Eine Rückwirkung der Aufhebung der Unterbrechung würde dagegen zu einer nachträglichen Wirksamkeit der Rechtsakte führen. Dies widerspräche Sinn und Zweck der Regel 142 EPÜ, die mit der Unterbrechung des Verfahrens dem Schutz der Verfahrensbeteiligten unabhängig von ihrer Rolle im Verfahren dient und auf deren Geltung sowohl der Anmelder oder Patentinhaber und auch Einsprechende und weitere Verfahrensbeteiligte vertrauen dürfen. [....] Es bestünde die Gefahr der Fristenverkürzung oder gar des Fristablaufs zum Nachteil der betreffenden Beteiligten, wenn bei nachträglicher Feststellung selbst einer rechtswidrigen Verfahrensunterbrechung die Unterbrechungswirkung nachträglich außer Kraft gesetzt würde.”

EPO Headnote

Die Feststellung der Unterbrechung eines Verfahrens wegen der Insolvenz eines Patent(mit)inhabers erfolgt zwar regelmäßig rückwirkend. Sie kann aber nur mit Wirkung ex nunc aufgehoben werden. Eine rückwirkende Aufhebung kommt auch nicht im Einzelfall unter Abwägung der betroffenen Interessen in Betracht. Vielmehr handelt es sich dabei um eine Rechtsfrage, die allgemein zu beantworten ist.

EPO headnote translation (informal)

The finding of the interruption of the proceedings because of insolvency of a (joint) patent proprietor has retroctive effect generally. However, it can only be retracted with effect ex nunc. A retroactive retraction of an interuption is not to be considred, not even in individual cases on the balance of interests. Rather, this pertains to a legal question that is to be answered on a general level. 


EPO J 0010/19  J 10/19 -  link

Sachverhalt und Anträge

I. Die Beschwerde richtet sich gegen die Entscheidung der Rechtsabteilung, den Antrag der Beschwerdeführerin (Patentinhaberin) auf Zurücknahme der Unterbrechung des Verfahrens gemäß Regel 142 (1) b) EPÜ, hilfsweise der Festsetzung der Wiederaufnahme des Verfahrens am 8. August 2017, zurückzuweisen.

Dem liegt folgender Sachverhalt zugrunde:

II. Gegen die Erteilung des europäischen Patents 220689 wurden am 26. bzw. 27. Mai 2015 fünf Einsprüche eingelegt. Die Einsprechenden 2 und 3 haben ihre Einsprüche während des Einspruchsverfahrens zurückgenommen.

III. Mit Wirkung vom 11. Juli 2017 wurde der Rechtsübergang eines Mitinhaberanteils an dem Patent zugunsten der Solar World Innovations GmbH in das Europäische Patentregister eingetragen. Über das Vermögen dieser Gesellschaft wurde am 1. August 2017 das Insolvenzverfahren nach deutschem Recht eröffnet.

IV. Am 12. September 2017 fand vor der Einspruchsabteilung eine mündliche Verhandlung über die Einsprüche statt, und zwar ausweislich der Niederschrift unter Beteiligung verschiedener Vertreter der damals eingetragenen Patentinhaberinnen "Solar World Innovations GmbH et al." sowie der noch beteiligten Einsprechenden. Am Ende der mündlichen Verhandlung erließ die Einspruchsabteilung eine Zwischenentscheidung, nach der das Patent in eingeschränkter Form auf der Grundlage der Ansprüche des Hilfsantrags 3 den Erfordernissen des EPÜ genügte. Die Zwischenentscheidung wurde am 6. November 2017 zur Post gegeben.

T 0054/17 - (1) Interruption of proceedings

Key points

• The Board decides that it is itself competent to decide on any interruption of the proceedings under R142 EPC rather than the Legal Division, following T 854/12. ( Dec. Pres. OJ 2013 p.600 says that sole responsibility for the interruption and resumption of proceedings is vested with the Legal Division). 
• Interruption of proceedings has retroactive effect, is effective from the date of the insolvency event in case of bankruptcy of the proprietor (Rule 142(1)(b) EPC) and is normally declared once the EPO has knowledge of the event (e.g. of the bankruptcy).
• However, in this case, the patentee had continued the proceedings for years after the bankruptcy without invoking the bankruptcy until shortly before the oral proceedings in appeal.
• Based on the principle of good faith, the Board finds the patentee in effect to be barred from invoking the bankruptcy in what appears to be a kind of estoppel. Hence, the proceedings are not interrupted.
• The patentee brought up the bankruptcy of the (former) joint patentee only two days before the oral proceedings in appeal, which were then postponed. The Board awards a cost apportionment against the patentee.
• As a note, the decision was given on 16.08.2018 in oral proceedings but notified in writing only about a year later on 08.08.2019. Overall timeline: filing in 23.11.2000 (so overall 19 years for grant and opposition), first and sole communication in 2006, grant March 2010. First OD decision March 2014 (only lack of novelty over D1) remittal in first appeal decision 07.10.2015 (T1195/14), second OD decision November 2016 (not novel over D4), accelerated proceedings in the second appeal. Does the EPO really needs 19 years to decide on whether this claim 1 is a patentable invention? (see also the next post about the Board deciding that claim 1 is insufficiently disclosed because it uses unusual and undefined terms for the distinguishing features).

A further post about the part of the decision about unusual parameters will follow in due course.



EPO T 0054/17 - link




EPO Headnote
1. Wenn eine Beschwerde vor der Beschwerdekamme anhängig ist, hat die Rechtsabteilung keine ausschließliche Zuständigkeit für die Frage der Unterbrechung des Verfahrens (siehe 1.4 der Entscheidungsgründe).

2. Setzt ein Patentinhaber in Kenntnis der Unterbrechungs-voraussetzungen, die ausschließlich in seiner Sphäre liegen, nach dem Wegfall der Unterbrechungsvoraussetzungen das Verfahren über Jahre uneingeschränkt fort, ohne sich darauf zu berufen, so erscheint es unbillig die Unterbrechung zu einem so späten Zeitpunkt geltend zu machen, mit der Folge, dass das bis dahin erfolgte Verfahren, an dem er bis dato aktiv mitgewirkt hat, zu wiederholen wäre. Dies widerspricht dem Grundsatz von Treu und Glauben (siehe 1.5 der Entscheidungs-gründe).

[Hn. 3 and 4 omitted]

Entscheidungsgründe

1. Unterbrechung des Verfahrens


1.1 Gemäß Regel 142 (1) b) EPÜ wird das Verfahren unterbrochen, wenn der Patentinhaber aufgrund eines gegen sein Vermögen gerichteten Verfahrens aus rechtlichen Gründen verhindert ist, das Verfahren fortzusetzen. Die Unterbrechung tritt automatisch ein und ist stets von Amts wegen zu berücksichtigen (J ../87, ABl. EPA 1988, 323). Gemäß § 80 Abs.1 der deutschen Insolvenzordnung (DE-InsO) geht mit Eröffnung des Insolvenzverfahrens das Recht des Schuldners, das zur Insolvenzmasse gehörende Vermögen zu verwalten auf den Insolvenzverwalter über, so dass hier am 30. Januar 2015 ein Unterbrechungstatbestand nach Regel 142 (1) b) EPÜ vorlag. Wird das Verfahren unterbrochen, beginnen die am Tag der Unterbrechung laufenden Fristen, mit Ausnahme der Frist zur Stellung des Prüfungsantrags und der Frist zur Zahlung der Jahresgebühren, an dem Tag von Neuem zu laufen, an dem das Verfahren wieder aufgenommen wird (Regel 142 (4) EPÜ). Mitteilungen und Entscheidungen des EPA, die in der Zeit zwischen dem Tag der Unterbrechung und dem Tag der Wiederaufnahme ergangen sind, sind gegenstandslos und sind nach Wiederaufnahme des Verfahrens erneut zuzustellen.

R 0007/18 - Cancelled flights and the Enlarged Board

Key points

• " VII. Oral Proceedings before the Enlarged Board of Appeal were scheduled to start at 10:30 on 4 February 2019. After no representative of the petitioner was present at 10:30 and taking into account that travel conditions might be difficult due to bad weather, the registrar of the Enlarged Board undertook enquiries with the office of the petitioner's representative. The start of the oral proceedings was delayed to allow said enquiries." 
• " VIII. The Enlarged Board then took note of a telefax letter sent by an employee of [the professional representative's] office [a large patent attorney firm in The Netherlands), which contained the information that [the professional representative] would not attend the hearing taking place on 4 February 2019 at 10:30 am due to cancelled flights [presumably this fax] . The telefax letter did not contain any request for postponement of the oral proceedings. The information given in the telefax letter was also obtained in two telephone conversations between the registrar of the Enlarged Board and two employees of the representative's office, Ms [X1] and Mr [X2]. The Enlarged Board then decided that the oral proceedings would take place in the absence of the petitioner's representative and started the oral proceedings at 12:30.
• The petition for review was unanimously rejected as being clearly inadmissible during the oral proceedings on 04.02.2019.
• The petitioner sent a letter about the oral proceedings taking place in his absence on 25.02.2019 explaining that on Sunday 3 Feb there was heavy snow and "the flight was cancelled" from Turin to Munich (by the airline I understand). The next flight on Monday 4 Feb at 6AM the next flight was also cancelled. Furthermore, the Registrar of the Enlarged Board Mr. C had retired on 31.01.2019 and the representative could not contact anyone of the Enlarged Board by phone. At the same time, his assistant Ms. X1 sent faxes to the Enlarged Board, the representative could not see the content of these faxes. The first time his assistant could reach someone of the Enlarged Board by phone was about 13:14 when the decision had already been taken (still according to the petitioner's letter).
• The fax of the assistant Ms. X1 of 09:24 stated in the entire relevant part: "Mr. [professional representative] will not the below hearing due to cancelled flights" (leaving open who had cancelled the flights).
• The Registrar issued a Communication on 10.04.2019 informing the petitioner that the email (p.2 of the PDF) of the representative to the Registrar Mr.C of 4 Feb 07:53 a.m. (mentioning 'events have conspired to prevent my arrival in Haar today' and 'my flight ... is cancelled') had no effect firstly because Mr.C had retired on 31.01 and secondly because email has no legal force, recalling that 'urgent queries or communications should, therefore, be sent by fax only, referring tot he Notice OJ 200 p.458) (Interesting to note that  this Notice still has legal force as long as fax is not yet abolished). The Communication refers to phone calls with the assistants Ms.X1 and Mr.X2 on 10:45, 11:23 and indicates that the decision of the Enlarged Board becomes formally res judicata 'as soon as it was pronounced public oral proceedings'. The Communication acknowledges the petitioner's request for interruption under Rule 142(1)and then gives some reasoning - of the Registrar of the Enlarged Board.
•  On 06.05.2019, the petitioner sent a further letter requesting in essence re-opening of the proceedings invoking inter alia interruption under Rule 142.  The written decision of the Enlarged Board was notified on 19.06.2019. With a letter of 10.07.2019 the petitioner formally requests interruption under Rule 142. With a letter of 25.07.2019, the Legal Division informs the petition that 'all proceedings before the EPO concerning [the patent] have been completed" and that the EBA has already dealt with the request in the Communication of 10.04.2019. On 06.08.2019, the petitioner files a further letter requesting for a decision on the interruption by the Legal Division itself (I don't understand the point fully, the letter of 25.07.2019 is signed by a lawyer of the EPO). 
• As a comment, under recent decision T 54/17 the Enlarged Board itself appears competent to decide on interruption under Rule 142 caused by events occurring during the petition for review procedure.

EPO R 0007/18 - link

[text omitted; the relevant part is cited above].

T 0516/14 - No interruption for opponent

Key points

• " The insolvency administrator of [German] opponent 1 submitted that with the opening of insolvency proceedings over the assets of opponent 1, the appeal proceedings had to be interrupted according to § 240 S1 ZPO, German law." 
• The Board points out that in proceedings before the EPO, the applicable law is the EPC. 
• " Rule 142(1)(b) EPC stipulates that proceedings before the EPO are to be interrupted "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". "Neither this nor any other provision mentions an opponent in opposition proceedings." 
• " The application of Rule 142(1)(b) EPC to an opponent by analogy is not justified either. Generally, in opposition proceedings, the legal situation for an opponent is different from that of a patent proprietor. While for a patent proprietor the irremediable loss of its patent is at stake, the opponent, if unsuccessful, could still bring an action for revocation before national courts." 
• The Board points out that the insolvency administrator becomes, under German law, the party to the proceedings ex officio "as of 14 July 2016. This provided the administrator with enough time to become acquainted with the case and prepare for the oral proceedings scheduled on 25 January 2019" 

EPO T 0516/14 - link

Reasons for the Decision

1. The appeals are admissible.

2. The invention

The invention relates to a device for producing a three-dimensional tomographic mammography image, with the general objective of making possible an early detection of breast cancer.

The device is generally depicted in figure 2A, reproduced below.

FORMULA/TABLE/GRAPHIC

T 1389/18 - Interruption of proceedings

Key points

• The Board confirms that the Legal Division can also retroactively conclude that an interruption of proceedings took place under Rule 142 EPC (this was not contested by the parties). In this case, the LD had found an interruption of proceedings due to insolvency proceedings being opened against one of the parties. The difficulty of the case that the LD found this on 04.01.2018, with effect of 01.08.2017, wheres oral proceedings had taken place on 12.09.2017 wherein the OD had pronounced the (interlocutory) decision that the patent can be maintained in amended form. Notices of appeals were filed on 15.01.2018 and 16.01.2018. 
• The Board concludes that any oral proceeding and any decision pronounced during such oral proceedings become non-existent if they take place during an interruption of proceedings.
• Hence, in the present case, with a retroactively found interruption of proceedings, there is no valid decision of the OD. Hence, the appeal is moot ("gegenstandslos"), the appeal proceedings are terminated "without a decision on the matter".
• As a comment, Rule 101(1) stipulates that an appeal is rejected as inadmissible if it does not comply with Article 106 EPC stating that "appeal shall lie from decisions".
• The Board refunds the appeal fee. The Board distinguishes from J 12/16, wherein the Legal Board had also found the appeal to be moot ("gegenstandslos") but had not refunded the appeal fee, because in J12/16 the appeal (concerning a request for registration of a transfer of an application) became moot during the appeal procedure (by the publication of the mention of the grant). 
• A further matter is that on the Legal Division had found on 31.07.2018 a further interruption of proceedings with effect of 01.06.2018 (again due to the insolvency of the patentee). The present Board finds that the Board needs to comply with this interruption, thereby distinguishing from T854/12 (r. 1.2.6.b; as a comment I think that there the reverse torpedo of the appeal procedure is meant). In T854/12, the Board found that it needs to decide itself on a possible interruption of proceedings in view of the devolutive effect of appeal. The present Board concludes that the devolutive effect is restricted for the case of a moot appeal, precisely in order to avoid that parties can "torpedo" the first instance proceedings simply by filing a  document called "appeal" thereby taking away the competence of the first instance departments. 

EPO T 1389/18 -  link


Headnote
1. Die Rechtsabteilung ist grundsätlich befugt, eine Unterbrechung des Verfahrens nach Regel 142(1)b EPÜ auch rückwirkend festzustellen (Gründe 4.).

2. Aus dem Wortlaut der geltenden Vorschrift "Unterbrechung des Verfahrens" und aus dem Gesamtzusammenhang der Regel 142 EPÜ kommt die Kammer zu dem Ergebnis, dass auch eine, während der Unterbrechung stattgefundene mündliche Verhandlung und eine in der Verhandlung verkündete Entscheidung der Einspruchsabteilung rückwirkend als nicht existent betrachtet werden müssen (Gründe 7.).

3. Dies bedeutet, dass es keine rechtswirksame Entscheidung der Einspruchsabteilung gibt. Folglich sind auch die Beschwerden vor der Kammer gegenstandslos, so dass das Beschwerdeverfahren ohne Entscheidung in der Sache beendet werden muss (Gründe 10.).

Sachverhalt und Anträge

I. Die vorliegenden Beschwerden betreffen die am 6. November 2017 zur Post gegebene Zwischenentscheidung der Einspruchsabteilung des Europäischen Patentamts betreffend die Aufrechterhaltung des Europäischen Patents Nr. 2220689 in geänderter Form.

II. Die für die Beschwerden relevanten Ereignisse lassen sich wie folgt zusammenfassen.

III. Am 12. September 2017 fand eine mündliche Verhandlung in Anwesenheit der Patentinhaberin und der Einsprechenden 1 und 4 statt. Am Ende der Verhandlung wurde die Zwischenentscheidung der Einspruchsabteilung verkündet. Die schriftliche Entscheidung wurde am 6. November 2017 zur Post gegeben, so dass die Beschwerdefrist am 16. Januar 2018 endete.

IV. Die Rechtsabteilung teilte den Parteien in einer Mitteilung vom 7. November 2017 mit, dass gegen eine der Patentinhaberinnen ein Insolvenzverfahren eingeleitet wurde. Damit musste die Rechtsabteilung prüfen, ob die Voraussetzungen für die Unterbrechung des Verfahrens nach Regel 142 (1) b) EPÜ vorlagen. Die Parteien erhielten Gelegenheit zur Stellungnahme, nach Aktenlage gingen jedoch keine Stellungnahmen beim EPA ein.