T 0639/23 - Lapse of patent and continuation opposition

Key points

• This decision was published in December 2025.
• The OD decided to maintain the patent in amended form. Both the opponent and the proprietor appealed. 
• The Board, in machine translation: "By letter dated October 14, 2025, the patent proprietor withdrew his appeal and his request for oral proceedings. At the same time, he declared that the patent had lapsed in all contracting states in which it would have been effective (DE, FR, AT, IT) by declarations of renunciation." 
• "In a communication under Rule 84(1) EPC dated 3 November 2025, the Board considered the documents submitted with the letter of 31 October 2025 to be sufficient to clearly demonstrate the effective waiver in all Contracting States in which the patent was last in force. The appeal proceedings could therefore be continued at the request of the opponent, provided that such a request was filed within two months of service of this communication."
• "By letter dated 10 November 2025, the opponent requested the continuation of the appeal proceedings."
• "By letter dated 17 December 2025, the patent proprietor commented on the opponent's letter of 10 November 2025". The proprietor submitted arguments that the proceedings should be terminated without a (substantive) decision.
• "The patent proprietor contested the opponent's arguments and, in its letter of December 17, 2025, asserted that the opponent had failed to sufficiently demonstrate a concrete, seriously threatened infringement and thus a concrete interest in legal protection. "
• " According to Decision T 598/98, Guidelines 1 and 2 and Reasons 1.6 to 1.8, in addition to the (in this case disputed, see above) existence of a legitimate interest of the opponent in the retrospective revocation of the patent, the Board's discretionary decision under Rule 84(1) EPC may also take into account ...."
• I still think T 598/98 conflated German national practice with the EPC, or too readily assumed that German practice in cases of lapse of the German patent is to be applied equally under the EPC.
• I don't think Rule 84 gives the OD discretion to continue the opposition procedure if the opponent requests that the OD take a written decision on the merits. In particular, if Rule 84 is interpreted to give the OD to discretionarily terminate the procedure against the request of the opponent (in case of a lapse), then Rule 75 EPC is meaningless ("An opposition may be filed even if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States."). Rule 84 must be interpreted (also) using the systematic method of interpretation.
• See my extensive comments on T 598/98 in this blog post.
• The Board decides to continue the procedure. "The "legal added value" of a decision on the merits, as demanded by the patent proprietor, compared to the mere discontinuation of the proceedings, is also present if the proceedings are continued, since, unlike discontinuation, the effect of a patent that is not valid is eliminated retroactively. Finally, the patent proprietor's argument that there is no concrete impact on a third party in this case is also unconvincing. Such a thing is not decisive for the continuation of the proceedings, since the objection (appeal) procedure is by its nature a review procedure for which a concrete impact on the objector or third parties is not necessary."
• The Board decides to revoke the patent.
• I don't know why the proprietor did not disapprove of the text. It could have been related to the mutual requests for a different cost apportionment (the Board refused both, though likely Rule 84 does not preclude a decision under Art. 104). Teva/Copaxone should also be considered, of course. 

EPO 

The link to the decision is provided after the jump.

T 1161/23 - Patent revoked in patent year 21

Key points

• The Board, in translation: "The appellant [opponent] argued that claim 1 would not meet the requirements of Article 123(2) EPC, contrary to the conclusions in point II.15.2 of the reasons for the contested decision. It submitted, among other things, that the addition of the feature that the reservoir (2) is axially movable in the body (1) would lead to an inadmissible intermediate generalisation. This characteristic, which could only be deduced from the first embodiment of figures 1 to 8, would be inseparable from the other characteristics specifically mentioned in this context. The Chamber agrees with this argument."
• Follows some concise reasoning.
• The decision is rather run-of-the-mill, except that the application was filed as a PCT application on 25.11.2004. The opposition appeal decision was dated 02.05.2025.
• EP entry in 2005, first communication of the Examining Division in 2009, refusal in 2011, appeal decision in 2013, second decision to refuse in 2014 (no interactions in between), second appeal decision in 2019. Grant in 2020. 
• I suppose it is just the trailing edge of the curve. Still, seeing an opposition appeal lasting into patent year 21, without the application being a divisonal application, is rare. 
• The Board had asked the opponent whether it was still interested in the appeal after the lapse in all states under rule 84(1) EPC. The opponent/appellant confirmed. 

EPO 

The link to the decision can be found after the jump.

T 0582/19 - Lapse of patent in all states

Key points

• Rule 84(1) provides that: "If the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse. "
• The general view is that the verb "may" implies that the proceedings can be terminated even if the opponent files the request, in certain cases.
• The present Board, in machine translation: "With regard to the request for continuation of opposition appeal proceedings under Rule 84(1) and Rule 100(1) EPC, filed within the time limit, the board exercises its discretion to allow this request. The legitimate interest asserted by the appellant [opponent]  to revoke the patent in full within the framework of these proceedings is inherent for the appellant opponent here, since the lapse of the patent in the [contracting states] is only effective ex nunc, while the revocation is effective ex tunc."
• This may be different if the patent is surrendered in all states and surrender has retroactive effect under the national law of all designated states wherein the patent is validated.
• See also my comments on T 1959/15. 

EPO T 0582/19

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

T 1959/15 - Continue opposition after lapse

Key points

• The Board continues the opposition appeal proceedings upon request of the appellant-opponent after the lapse of the patent. 
• “Having regard to the legitimate interest of the appellant-opponents in attempting to reverse the decision of the opposition division rejecting the opposition and to the circumstance that the board's decision on the patent has an ex tunc effect under Article 68 EPC, the board, exercising its discretion under Rule 84(1) EPC, decided to continue the appeal proceedings.”
• I note, favourably, that this reasoning is quite generic and does not refer to any particular circumstances of the case. It also implicitly recognizes that revocation is ex tunc unlike lapse of the patent, so that the opponent can very well 'gain' something by the continuation of the opposition procedure. Indeed the patent was revoked in this case.
• See also my comments on T 598/98.

EPO T 1959/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. The European patent in suit has lapsed for all the designated contracting states. Under Rule 84(1) EPC, which is applied mutatis mutandis in opposition appeal proceedings pursuant to Rule 100(1) EPC, the opposition appeal proceedings may be continued at the request of the appellant-opponent filed within two months of a communication from the board informing it of the lapse.

In the reply to the communication of the board informing them of the lapse, the appellant-opponents requested, within the set time limit of two months, continuation of the appeal proceedings and confirmed their requests that the decision under appeal be set aside and that the patent in suit be revoked.
Having regard to the legitimate interest of the appellant-opponents in attempting to reverse the decision of the opposition division rejecting the opposition and to the circumstance that the board's decision on the patent has an ex tunc effect under Article 68 EPC, the board, exercising its discretion under Rule 84(1) EPC, decided to continue the appeal proceedings.


[...]

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The patent is revoked.

T 2492/18 - Continuation of opposition

Key points

• This case concerns the continuation of opposition after the lapse of the patent. The OD issued the  "interlocutory decision to maintain the patent in amended form" in December 2016. In February 2017, a communication about the lapse of the patent was sent to the opponent (Rule 84). The opponent then filed an appeal and separately, a statement that it wished to continue the opposition proceedings. The opponent then withdrew the appeal (before filing a  Statement of grounds). More than a year later, the OD decided "not to continue the opposition proceedings. The reason given for the decision was that no timely request for continuation had been filed." 
• The Board points out "[a]though the opposition proceedings had led to an interlocutory decision which had become final after the withdrawal of the appeal against it, the opposition procedure was not yet completed and continuation of the proceedings could still have legal significance. For completion of the opposition proceedings the new specification of the amended patent would have to be published (Article 103 EPC). This publication is conditional upon certain acts of the proprietor, see Rule 82 (2) EPC". "There is no indication in the file that an invitation under Rule 82(2) EPC has been sent to the proprietor." "It follows from the above that the opposition division apparently has not recognized and considered the request of the appellant for continuation and that the appellant is thereby adversely affected".
• As a note, I don't think that the Boards reasoning is very useful. As I understand it, the publication of the new patent specification has no legal effect (just as for the first patent specification). What is, however, important, is that the formal decision to maintain the patent in amended form under Art.101(3)(a) EPC is only taken after the filing of the translated claims and payment of the fee under Rule 82. If the opposition is terminated under Rule 84(1), the patent is maintained as granted. Note that the interlocutory  decision of the OD was not "to maintain the patent in amended form"  (as the Board writes) but actually that "account being taken of the amendments ... the patent ... and the invention to which it relates are found to meet the requirements of the Convention" (link), which is one of the two requirements of Art.101(3)(a) for a decision to "maintain the patent as amended" (the other requirement is that "the conditions laid down in the Implementing Regulations are fulfilled").
• The Board remits the case to the OD with the remark that "the opposition division should take a new decision, with due consideration of the request of the appellant". The Board does not use the opportunity to comment on whether a request of the opponent for a continuation of the proceedings is a necessary condition or a necessary and sufficient condition for the continuation of the proceedings (see my post about T 598/98). 

EPO T 2492/18 -  link

Reasons for the Decision

1. The appeal complies with Article 106 to 108 and Rule 99 EPC and is therefore admissible.

2. According to Rule 84(1) EPC, opposition proceedings may be continued, even if the patent concerned has been surrendered or has lapsed in all the designated Contracting States, at the request of the opponent, which has to be filed within two months of a communication informing him of the surrender or lapse.

3. In the present case the (somewhat unusual) chronology of events was as follows. The opposition division issued its interlocutory decision to maintain the patent in amended form on 22 December 2016. The opponent was informed with a communication pursuant to Rule 84(1) EPC dated 2 February 2017 of the lapse of the opposed European patent, and was given a time limit of two months to file a request for continuation if it so wished. On 28 February 2017 the opponent filed an appeal against the decision of the opposition division, receiving the file number T 0529/17. On 14 March 2017 the opponent stated its wish to continue the opposition proceedings, explicitly referring to the communication dated 2 February 2017. On 26 April 2017 the opponent withdrew the appeal in the appeal proceedings T0529/17, but at the same time confirmed its wish that the opposition proceedings be continued, by an express reference to its previous request for continuation dated 14 March 2017. On 27 July 2018 (and thus more than one year after the request was made, and also more than one year after the request was confirmed when notifying the withdrawal of the appeal!) the opposition division decided not to continue the opposition proceedings. The reason given for the decision was that no timely request for continuation had been filed.

T 0598/98 - Opposition and lapse

Key points

• In recent decision T 1403/16 the Board said that: " the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion" . 
• I was a bit surprised by this, because to me it seems weird that if the opponent requests continuation, the OD can decide at their discretion to terminate the proceedings.
• Both the Benkard book (2nd, art. 99, nr. 62) and the Singer/Stauder (5th ed. Art. 101 nr. 70) say that the decision is a discretionary one, Singer referring to T 598/98. Therefore, today's post is about that decision.
• The T 598/98 decision is in German, so I give the German text of Rule 84(1) first:  "ist das Patent in allen diesen Staaten erloschen, so kann das Einspruchsverfahren fortgesetzt werden, wenn der Einsprechende dies innerhalb von zwei Monaten ... beantragt". 
• The Board takes "kann"  is indicating that continuation is optional, not as indicating that the Opponent's request is a requirement for continuation (if it indicates a requirement, continuation can still be mandatory if the requirement is fulfilled).
• The Board "Die Entscheidung, das Verfahren entweder einzustellen oder fortzusetzen, liegt somit nach dem Wortlaut der Vorschrift auch dann im Ermessen der Einspruchsabteilung, wenn der Einsprechende die Fortsetzung des Verfahrens beantragt hat." 
• This result is still weird taking into account that under Article 99(3) EPC 1973, " an opposition may be filed even if the European patent has been surrendered or has lapsed for all the designated States." The EPC gives you a right to file opposition, but whether the OD actually considers the opposition in substance is at the OD's discretion under T 598/98.
• To cite the Travaux Préparatoires, Rule 60, M/PR/1, point 94, point 2284, the idea of Rule 60 is "to recognise an opponent's right to have opposition proceedings continued where a European patent had been surrendered or had lapsed while opposition proceedings were still in progress" (emphasis added). From the proposal (M/14, p. 102) leading to the text: "if any party interested is granted the right to institute proceedings against a European patent which has been surrendered or which has lapsed for all the designated States, it would logically be necessary to grant the opponent the right to have the opposition proceedings continued where the European patent is surrendered or lapses whilst the proceedings are taking place" (emphasis added; also referenced in T598/98).
• This understanding was confirmed in T740/15: the Board deduces "from the Travaux Préparatoires that in the presence of a valid request of the opponent to continue the opposition proceedings [], the scope of Rule 60(1) EPC (now Rule 84(1) EPC) was intended to limit the discretion of the opposition division to the continuation of the opposition proceedings. The opposition division had therefore in the circumstances of the present case no other discretion than to continue the opposition proceedings." For some reason, T 598/98 is still in CLBA IV.C.4.1.2.a whereas T 740/15 is in CLBA IV.C.4.1.2. 
• Perhaps it is no coincidence that T 598/98 is in German. From T 598/98: "Im deutschen Patentrecht wird die Auffassung vertreten, daß das Erlöschen des Patents zur Erledigung des Einspruchsverfahrens [i.e. for the DPMA] in der Hauptsache führt. Das Einspruchsverfahren wird nur fortgeführt, wenn der Einsprechende ein schutzwürdiges Interesse an dem rückwirkenden Widerruf des ex nunc erloschenen Patent dartun kann" (See also Benkar, loc. cit.)
• The Board decides in T 598/98 that it must take into account "procedural economy" in view of the duration and number of other appeal cases pending before it. In my view, where the legislator so clearly wishes to give the opponent a right (even if the wording of the provision is not unambiguous), work load of the Board can not be a factor.
• Finally, the Patentee can terminate the substantive opposition proceedings at any time by disapproving the text / requesting revocation. The fact that the Patentee does not do so, indicates that there is commercial value in the patent, confirming that the opposition is not meaningless.
• The Guidelines state in GL D-VII 5.1 that " the opposition proceedings must be continued at the request of the opponent filed within two months after the date on which the opposition division informed the opponent of the surrender or lapse" (emphasis added). The Guidelines also state that " If, in the case of a request for continuation of the proceedings, the patent proprietor has renounced before the competent authorities in the designated states all rights conferred by the patent with ab initio and universal effect, or if no request for continuation has been received within the time limit, the opposition proceedings will be closed. The decision to close the proceedings will be communicated to the parties." This of course is contradictory: what if the Patentee alleges that he has renounced ab initio and with universal effect, but the opponent requests continuation? In that case it would be convenient if the Patentee would disapprove the text in opposition, leading to revocation of the patent by the OD, which should not change anything for Patentee if the patent was indeed renounced entirely, ab initio, and with universal effect.

EPO T 598/98 -  link

EPO Headnote

1. Das Bestehen eines Rechtsschutzinteresses der Einsprechenden an einem rückwirkenden Widerruf des Patents ist eines der Elemente, die für die Entscheidung der Kammer über Einstellung oder Fortsetzung des Einspruchsbeschwerdeverfahrens gemäß Regel 60 (1) EPÜ eine Rolle spielen können.

2. Das allgemeine Interesse an einer zentralen Feststellung über die Patentwürdigkeit einer in einem Patent beanspruchten Erfindung rechtfertigt es jedenfalls dann, ein Verfahren nach Erlöschen des Patents gemäß Regel 60 (1) EPÜ noch bis zum Erlaß einer Endentscheidung fortzusetzen, wenn die Sache im Zeitpunkt des Erlöschens im wesentlichen entscheidungsreif ist, und es auch im Hinblick auf den Bestand des Patents einen Unterschied im Ergebnis ausmacht, ob eine Sachentscheidung getroffen oder das Verfahren bloß eingestellt wird (hier: Widerruf des Patents durch die Kammer nach Zurückweisung des Einspruchs durch die Einspruchsabteilung).

Entscheidungsgründe

1. Fortsetzung des Verfahrens (Regel 60 (1) EPÜ)

T 1403/16 - Termination of opposition

Key points

• In this opposition case, the EPO had sent a Communication under Rule 84(1) EPC to the opponent, informing him that the patent had lapsed (or was surrendered) in all designated States and setting a period of 2 months for requesting continuation of the opposition. The Opponent had requested continuation, but only after expiry of the period. The opponent had filed the request with a request for re-establishment of rights. The OD decides that the RE request is inadmissible, and that the opposition proceedings are discontinued.
• The Board considers that in this case, RE is not available, because the condition of Article 122 EPC, that  "the non-observance of this time limit has the direct consequence of causing [...] the loss of any other right..." is not met. 
• The Board (1) "In opposition proceedings, in the event of a failure to reply in due time to a communication from the opposition division, there is no loss of rights which occurs automatically by operation of law. The board observes that the legal situation is different in the proceedings up to grant, where failing to reply to a communication in due time leads to a loss of rights by operation of law (application deemed withdrawn; see for example Article 94(3) and (4) EPC)." 
• The Board (2) then considers that a failure to reply to a Communication of the OD under Article 101(1) EPC "does not have any direct legal effect within the meaning of Article 122(1) EPC". The  Board then reasons that "This conclusion equally applies to the time limit under Rule 84(1) EPC." The Board further adds that "A discontinuation of the opposition proceedings under Rule 84(1) EPC generally requires an appealable decision by the opposition division. Hence, non-compliance with the two-month time limit under Rule 84(1) EPC does not directly cause a loss of rights."
• The Board then explains that (3) "If an opponent requests that the opposition proceedings be continued, but does so only after expiry of the two-month time limit under Rule 84(1) EPC, it is up to the opposition division to consider that request - by application of Article 114 EPC - and to decide on whether or not to continue them. If, where appropriate, the opposition division takes a decision to discontinue the proceedings, this decision is open to appeal."
• The Board then (4) states that: "In the light of the above, the decision under appeal is based on an inaccurate assessment of the legal situation underlying the case in hand. In consequence, the board judges that the opposition division's decision has to be set aside and the case remitted in order for the opposition division to decide on whether or not to continue the opposition proceedings under Rule 84(1) EPC, provided that the appellant confirms that it wants them to be continued."
• As a comment to point (1), for the formalities examination during grant (Rule 58), the consequence is generally a refusal under Article 90(5) EPC. 
• As a comment to point (2), issuing an (appealable) decision to discontinue the appeal under Rule 84 EPC is established practice at the EPO (see e.g. T 740/15, r. 3) and was in fact issued in this case on 06.04.2016. Under point V(iii), the Board notes that such decision was indeed taken by the OD in this case; simultaneously with the decision rejecting the RE request as inadmissible.
• As a comment to point (3),  the decision is not very clear at this point ("if the OD takes a decision") about whether the Board takes into account that the OD had actually already issued such appealable decision. Possibly, the Board implicitly assumes here that the OD has not already taken the decision to discontinue the proceedings (which is normally done shortly after expiration of the 2 months  time limit, but with some delay for the possibility of requests filed by paper mail under Rule 133(1) EPC). If such decision to discontinue has already been taken, in my view filing the request later does not help (appeal is possible, and may reopen the possibility to file the request by analogy to J18/08).
• As a comment to point 4, possibly the Board expresses here that the OD's decision to discontinue fails to give reasons on whether to admit the request under Article 114 (lack of reasoning would be a substantial procedural violation, but the Board is silent about that). Also possible is that the Board here only thinks of the decision on the RE request as the "decision under appeal'. 
• The Board's decision furthermore includes the remark that: "Rather, the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion."
• As a comment, This suggest that the OD may decide to discontinue at its discretion even if the opponent requests continuation. That, surprisingly for me, is indeed what old case law suggests  (T598/98)  but seems a rather weird result. The easy case, of  no request, leaves no discretion to continue (T 329/88). 
• The Board's decision makes sense at least for the following point: if the sanction on not replying in time is a decision, the decision is taken ex nunc, i.e. based on an examination of the file as it stands on the date of taking the decision, and the decision must take into account a late response at least consider whether to admit the late filed response under Article 114 EPC.

EPO T 1403/16 -  link

Rule 84(1) 

If the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse.

Summary of Facts and Submissions

I. The present appeal lies against the decision of the opposition division of 6 April 2016 concerning the discontinuation of the opposition proceedings under Rule 84(1) EPC.

T 0040/15 - Appeal after lapse

Key points

• In this opposition appeal, the appeal continues after 20-year patent term, because the opponent (appellant) requested so. The application at issue is a Euro-PCT application,(not a divisional application). The entry into the EP regional phase was in 2007, supplementary search report in 2011, grant in 2012, decision OD in 2014. 
• The patent is revoked as not novel over D7, filed with the Statement of grounds. 

EPO T 0040/15  - link

1. Rule 84(1) EPCReasons for the Decision

Although the European patent in suit had lapsed in all the designated Contracting States, the appellant requested that the opposition appeal proceedings be continued in response to a communication of the Board under Rule 84(1) EPC informing the appellant of the lapse. Consequently, the Board continued the appeal proceedings.

T 1825/11 - Continuation opposition after lapse

EPO T 1825/11

For the decision, click here
Key point

• In the present case, the patent had lapsed in all Contracting States during opposition-appeal. The question was which of the parties can request continuation of the proceedings. Rule 84(1) EPC gives that right to the opponent (in first instance proceedings). 
• The Board notes "that the patent proprietor also can request that the appeal proceedings be continued", thereby following established case law (in particular T 520/10)
• As a comment, note that T 520/10 states that "it is the patent proprietor who can request that the appeal-proceedings". The present decision states "that the patent proprietor also can request that the appeal proceedings be continued". Presumably, each appellant has the right, regardless of its status as proprietor or opponent. 

Summary of Facts and Submissions

I. The patent proprietor (appellant) lodged an appeal against the decision of the opposition division to revoke European patent No. 1 931 711.

II. The patent was opposed by four parties, opponents 1 to 4, now respondents I to IV.

III. In a communication pursuant to Rules 84(1) and

100(1) EPC dated 20 April 2015, the board drew the parties' attention to the fact that the patent had lapsed in all designated Contracting States and the parties were asked to inform the board, within a two-month time limit, whether any of them requested a continuation of the appeal proceedings. The parties were informed that if no request for continuation of proceedings was received in due time, the appeal proceedings would be discontinued.

IV. No party requested a continuation of the appeal proceedings in response to the communication of the board.

Reasons for the Decision

1. If a European patent has lapsed in all of the designated Contracting States, the opposition proceedings may be continued at the request of the opponent, filed within two months of a communication of the European Patent Office informing it of the lapse (Rule 84(1) EPC). According to Rule 100(1) EPC, this also applies in appeal proceedings following opposition proceedings (see e.g. decision T 329/88 of 22 June 1993, points 1 and 2 of the reasons, and decision 749/01 of 23 August 2002, points 2 and 3 of the reasons).

2. However, in the present case, given the status of the patent proprietors as appellant, it would not be appropriate for the opponents alone to decide whether the appeal proceedings, filed against an decision adverse to the appellant, are to be continued. For this reason, the board considers that Rule 84(1) EPC is to be applied mutatis mutandis in such opposition appeal proceedings, so that the patent proprietor also can request that the appeal proceedings be continued (see e.g. decision T 708/01 of 17 March 2005 and decision T 520/10 of 11 June 2013, both point 1 of the reasons).

3. As no party has, within the time limit set, requested the continuation of the appeal proceedings, the appeal proceedings are to be terminated.

Order

For these reasons it is decided that:

The appeal proceedings are terminated.

T 2196/11 - Continuation of opposition after lapse

EPO T 2196/11

For the decision, click here.

Key point

• The case concerns the somewhat unusual case of continuation of opposition-appeal after lapse of the patent in all Contracting States. The Board applies the rules for such case. 
• The opposition-appeal was continued the (appealing) opponent had requested so (following Rule 84(1) EPC) and the patent proprietor had not withdraw approval of the text.
• I wonder whether withdrawal approval of the text would result in termination of the proceedings (as the Board seems to assume) or in revocation of the patent. 

Reasons for the Decision

1. Continuation of the proceedings

Although the respondent (proprietor) had stated that the patent had lapsed in all Contracting States and that no application for restoration had been made in any Contracting State, it did not however withdraw its approval of any text on which the patent could be maintained and indeed it maintained its main request and all of its auxiliary requests. The appellant (opponent) also requested [in response to the Communication under Rule 84(1) EPC) that the opposition proceedings be continued. The stated intention of the appellant (opponent) not to continue proceedings if the patent had irrevocably lapsed is a conditional request over which the Board has no control. Furthermore, by telefax dated 3 July 2015 it explicitly maintained its request that the patent be revoked.

The Board thus continued proceedings.
[After jump: revocation inter alia for failure to amend the description in auxiliary requests]

T 0500/12 - Opposition appeal continued after lapse

Key point

• The Board applies R84(1) EPC in appeal: the appeal of the opponent is continued at his request, even while patentee stated that the patent had been surrendered or lapsed in all States.

Analysis

• The Board states that the opponent had "the appellant provided evidence from several national patent registers showing that the opposed patent had not lapsed in all Contracting States and that it was still in force." Correct as that may be, it does not seem relevant: even if the patent had lapsed fully, the appeal had (imho) still be continued at the simple request of the opponent. If only because revocation is retroactive (from the outset) while lapse is not.

T 0500/12

Online 30.04.2015 - dated 24.04.2015 - Board 3.3.08 (Wieser, Julia, Rogers), for the decision, click here

Summary of Facts and Submissions

I. European patent number 1 716 233 was maintained by the opposition division in amended form in accordance with an Auxiliary Request 2. The opposition division considered the Main Request and Auxiliary Request 1 not to fulfil the requirements of Article 54 EPC. All requests were filed at oral proceedings before the opposition division on 1 November 2011.

II. An appeal was lodged by the opponent (appellant). In the statement setting out its Grounds of Appeal, the sole argument put forward by the appellant concerned a lack of inventive step of the request upheld by the opposition division (Article 56 EPC). As an auxiliary measure, oral proceedings were requested.

III. In reply to appellant's Grounds of Appeal, the respondents (patentees) referred only to their arguments submitted with a letter dated 28 February 2011 in reply to opponent's Notice of opposition. A copy of this letter was enclosed to the respondents' submissions. The respondents requested oral proceedings as an auxiliary measure.

IV. In a letter dated 6 May 2014, the respondents informed the board of their intention not to take further action in relation to the appeal proceedings and not to attend the payment of the national renewal fees for the patent. The request for oral proceedings was withdrawn.

V. In a communication issued on 30 June 2014, the board, with reference to Rule 84 (1) EPC, sought to clarify the appellant's intentions as regards the continuation of the appeal proceedings. The board informed the respondents that the appeal proceedings could not be terminated by informing the EPO that the opposed patent was surrendered.

VI. The appellant requested to continue the appeal proceedings. The respondents did not reply to the board's communication and did not file any submissions regarding appellant's request to continue the appeal proceedings.

VII. The board issued a communication pursuant to Rule 100(2) EPC informing the parties that appellant's Request to continue the appeal proceedings was granted (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, IV.C.6.2, page 849). [...]

Reasons for the Decision

Appellant's request for continuation of the appeal proceedings

1. In reply to the respondents' notice that they did not intend to take further action in relation to the appeal proceedings, that they did not pay the national renewal fees due in January 2014 and that they did not intend to pay these renewal fees within the available grace periods, the appellant requested the continuation of the appeal proceedings (Rule 84(1) EPC; cf. points V and VI supra).

2. The appellant provided evidence from several national patent registers showing that the opposed patent had not lapsed in all Contracting States and that it was still in force. The appellant further indicated that the annuity fees could be paid not only by the patentees but also by a third party. Furthermore, annuity fees could still be validly paid with surcharge until 31 July 2014 in many of the Contracting States and, even if annuity fees were not paid with surcharge in due time, reinstatement periods had also to be considered.

3. In the light thereof, the board granted appellant's request to continue the appeal proceedings and informed the parties accordingly in its communication pursuant to Rule 100(2) EPC (cf. point VII supra).