EP 2 654 789 B1 relates to antibodies against human CD39 for inhibiting the immunosuppressive effects of a CD39-expressing cancerous cell.
Brief outline of the case
The patent was revoked and the proprietor appealed.
During the appeal the patent has lapsed with effect for all the designated Contracting States.
The board of appeal invited the proprietor to declare whether he wanted the appeal to be continued. Within the time limit under R 133(1), the proprietor did not reply.
The board decided not to continue appeal proceedings and revoked the patent.
The bord’s decision
If a European patent has lapsed in all designated Contracting States, opposition proceedings may be continued at the request of the opponent under R 84(1).
According to R 100(1), this also applies in appeal proceedings following opposition proceedings.
However, if – as in the present case – the proprietors are the appellants, it would be inappropriate to allow the opponent(s) (respondent(s)) to decide whether the appeal proceedings shall be continued.
For this reason, R 84(1) has to be applied mutatis mutandis in such opposition appeal proceedings.
The board referred to T 606/10, Reasons 1.3, so that it is the patent proprietors who can request that the appeal proceedings be continued, as well as to T 708/01, Reasons 1 and T 520/10, Reasons 1.
As the proprietors have not replied within the given time limit to the communication by the board providing the opportunity to request continuation of the appeal proceedings, the appeal proceedings were to be terminated.
Comments
In T 606/10, the opponent requested continuation of the appeal after lapse of the patent, but the proprietor requested the appeal proceedings to be terminated and, as AR, that the patent be revoked. The opponent’s request could not be granted under R 84(1), as the proprietor’s request prevailed.
In T 708/01, the board held that, if the proprietor has appealed the decision of the OD, the appeal proceedings can be continued for all designated contracting states after the European patent has lapsed. The proprietor may also request that the patent be maintained in amended form with effect only for the past.
It is only in T 520/10 that a similar situation as the present one has occurred, and the board decided the application of R 84(1) mutatis mutandis to the proprietor. T 708/10 and T 606/10 were both mentioned in T 520/10.
Strictly speaking there seems to be a shortcoming in the Implementing rules.
However, in view of the notion of party disposition, it appears pragmatic to decide the end of the appeal proceedings when a proprietor does not reply to a communication inviting him to decide upon continuation of the appeal when the patent has lapsed in all designated contracting states.
The proprietor could contribute to a positive clarification of the situation by declaring expressly that it does not approve the text in which the patent has been granted or maintained and to withdraw all AR. Then the patent will be revoked directly and not implicitly.
Comments
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