EP 1 765 914 B1 relates to a method for preparing a bitumen-polymer mixture.
Brief outline of the cade
The OD revoked the patent for non-conformity with Art 123(2) of all requests on file.
The proprietor appealed the OD’s decision.
The board noted in a communication dated 13.08.2025 that, since more than 20 years had elapsed since the filing date of the application (09.06.2005) giving rise to the patent in dispute, the patent must have expired in all Contracting States, cf. Art 63(1).
In the same communication, the board also noted, that the present proceedings could therefore only be continued at the request of the opponent, cf. Rule 84(1).
The fact that the patent in dispute had lapsed in all Contracting States was not disputed.
In said communication, the proprietor was invited to state whether he wished the opposition procedure to be continued.
No reply to the communication was received.
The board thus closed the opposition proceedings without a decision on the merits.
The board’s decision
If a European patent has lapsed in all the designated Contracting States, opposition proceedings may be continued only at the request of the opponent.
In accordance with R 100(1), this also applies in opposition appeal proceedings. However, if, as in the present case, the proprietor was the appellant, it would be inappropriate to allow the opponent to decide whether the appeal proceedings should be continued.
Rule 84(1) must therefore be applied mutatis mutandis in such opposition appeal proceedings, so that it is the proprietor, in this case the appellant, who can request that the appeal proceedings be continued. The board referred to T 708/01, Reasons 1 and to Case Law of the Boards of Appeal of the EPO, 11th edition, 2025, III.Q.2.2.2.
Since the board’s notification dated 13.08.2025 was sent to the parties electronically and the board received confirmation from the registrar that this notification had been delivered to the parties on the same day, the board had no reason to doubt that the notification was received by the parties, in particular by the proprietor.
Therefore, by failing to respond to this notification within the prescribed period, the proprietor did not comply with the provisions of R 84(1) relating to the continuation of appeal proceedings.
This was interpreted as meaning that the proprietor did not wish to request the continuation of the proceedings.
In these circumstances, the board saw no reason to continue the appeal proceedings ex officio.
The appeal proceedings were therefore closed without a decision on the merits of the case.
Comments
The board has taken a very pragmatic position. It is however surprising that R 84(1) expressis verbis only provides the opponent with the right to continue the opposition after lapse of the patent.
R 84 provides, in general, the possibility to continue the opposition by the EPO of its own motion.
This is the case when it is likely that the opposition may result in a limitation or revocation of the European patent without further assistance from the opponent(s) concerned and without the OD itself having to undertake extensive investigations, see Guidelines D-VII, 5,2, or 5.3.
According to T 708/01, it could well be the proprietor request that the patent be maintained in amended form with effect only for the past.
With a massive problem of added-matter, which was present for a great part of the examination procedure, the proprietor was most probably sitting in an inescapable trap.
Disputing a lapsed patent is tantamount of flogging a dead horse.
The fate of the application is nevertheless surprising.
It took 15 years and 7 months, and no less than 8 communications to go from filing to the communication under R 71(3). And this for the present result.
The file must have been buried very deep in the examiner’s cupboard in spite of all IT means available to trace submarines.
Any ping-pong between examiner in charge and applicant should be avoided by summoning to OP.
More than 3 communications should be an exception. Experience shows that with more than 3 communications, the situation is not improving, but rather deteriorating.
Comments
Leave a comment