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.
source http://justpatentlaw.blogspot.com/2023/04/j-000921-interruption-of-proceedings.html
