An opposition proceeding can continue at the opponent’s request even when the patent owner abandons the European patent in all designated contracting countries or when the affected patent has expired in all designated contracting countries. The opponent must file a corresponding request within two months after the communication from the European Patent Office about the abandonment or expiration.
Rule 84 (1) EPC
1. Chronology of the case
In the present case, the opposition department had issued its interim decision regarding the maintenance of the patent in amended form. The opponent was informed with the official communication according to Rule 84(1) EPC about the expiration of the European opposition patent and received a term of two months for filing the request for continuation of the proceeding.
The opponent filed an appeal against the interim decision of the opposition department. Approximately two weeks later, the opponent declared the intention that the opposition proceeding be continued and expressively referred to the official communication. Following that, the opponent withdrew the appeal and confirmed at the same time his intention that the opposition proceeding be continued.
The opposition department decided within approximately one year after receipt of the request for continuation of the proceeding that the opposition proceeding would not be continued. The reason given was that no timely request for continuation had been made.
The opponent filed an appeal against this decision of the opposition department and requested that the opposition proceeding be continued and the appeal fee be refunded.
The opponent (in the following: the appellant) accused the opposition division of having ignored the appellant’s request for continuation of the opposition proceeding in the decision to not continue the proceeding. In the substantiation of appeal, the appellant referred to the timely filed request for continuation, which had never been withdrawn. Therefore, the appellant complained about the reason in the disputed decision that no request for continuation of the proceeding according to Rule 84(1) EPC had been made. Furthermore, the appellant claimed that an essential procedural breach had been made by the opposition division when not considering the request.
2. Decision of the appeal chamber
The Chamber agreed with the appellant in that the reason, which was brought forward by the opposition department, for not continuing the opposition proceeding, was not correct, as the file did contain an expressive and unambiguous letter of the appellant dated March 14, 2017 requesting the continuation of the proceeding within the prescribed term.
Furthermore, the appellant had expressively confirm the request for continuation of the opposition proceeding when withdrawing the appeal against the interim decision and also clarified that the withdrawal does not affect the request for continuation according to Rule 84 (1) EPC.
In this specific case, the request for continuation was filed at a time when an appeal was pending and it would have fallen within the responsibility of the Chamber of Appeal to decide on the request. However, the appeal was withdrawn after two months and thus before the Chamber could deal with the request. From that moment, the opposition department was responsible for handling the request. The course of the matter might have led to confusion, however, it does not change the fact that a request for continuation was filed in time and that the opposition department was obliged to examine the request.
The Chamber of Appeal was also of the opinion that the appellant had been impaired by the decision of the opposition department:
Even though the opposition proceeding led to an interim decision, which entered into force after the legally effective withdrawal of the appeal, the opposition proceeding had not yet been concluded and the continuation of the proceeding could still have some legal significance. In order to conclude the opposition proceeding, the new specification of the patent would have to be published (Art. 103 EPC), with this publication being dependent on certain actions by the owner (Rule 82 (2) EPC), such as for example the payment of the prescribed fee and filing translations of the amended claims. The same Rule applies when the Office asks the patent owner to take these actions within a certain deadline. Non-adherence to such request leads to the revocation of the patent. Contrary to the termination or abandonment, the revocation has retroactive legal consequences, see Art. 68 EPC.
Furthermore, the file did not contain any information that the patent owner received a communication according to Rule 82(2) EPC. Consequently, the opposition department obviously did not recognize the appellant’s request for continuation and did not examine it, which is why the appellant was impaired.
Due to the fact that the decision to not continue with the opposition proceeding was based on a incorrect reason, it had to be repealed and the opposition division had to make a new decision by duly considering the appellant’s request.
Furthermore, the Chamber concluded that a complete non-observance of an expressive and unambiguous request was an essential procedural breach. In fact, the appellant was quite obviously not heard regarding this request, contrary to Art. 113 (1) EPC. The circumstance that this was probably not intended but solely the result of an oversight of the opposition department, so that the opposition department was not aware of the request at all, is not relevant in this connection. Due to these circumstances, the Chamber considered it fair that the appeal fee was refunded.
The abandonment or termination of the patent applies ex nunc, i.e. from the date of abandonment or cancellation, there is no patent protection anymore, while the revocation applies ex tunc, i.e. the patent shall be deemed not to have had, from the outset, any effect (Art. 68 EPC).
The opponent can indeed have an interest in a revocation of a European patent even when the patent terminated or was abandoned.
EPO decision dated November 4, 2019 – file no. T 2492/18
June 18, 2020