J 0028/94 (Suspension of proceedings) of 4.12.1996

Summary of Facts and Submissions

I. European patent application No. 91 402 380.9 was filed with the European Patent Office on 5 September 1991 by Soludia S.A. (France). On 21 October 1994, the examining division's decision to grant a European patent under Article 97(2) EPC was sent to the EPO post room, which despatched it to the applicant on 27 October 1994. This decision indicated that the mention of grant would be published in European Patent Bulletin No. 94/49 dated 7 December 1994.

II. By fax dated 27 October 1994 and received the same day at the EPO, a third party - Renacare Limited - asked the EPO to suspend the grant proceedings pursuant to Rule 13(1) EPC. At the same time, it provided evidence that it had opened proceedings against the applicant before the court of first instance (Tribunal de Grande Instance) in Toulouse on 7 October 1994 with the aim of establishing that Renacare, not Soludia, was entitled to grant of the European patent.

III. By decision of 25 November 1994, the EPO's Legal Division rejected the request for suspension of the proceedings on the grounds that on the date of receipt of the request for suspension the examining division had already decided to grant the European patent under Article 97(2) EPC.

IV. On 28 November 1994, the appellant (Renacare Limited) filed notice of appeal and paid the relevant fee. The statement of grounds of appeal was filed at the same time.

V. Also on the same day, under Article 109(2) EPC, the Legal Division referred the appeal to the board of appeal.

VI. The appellant's main request was that the decision of 25 November 1994 be set aside and the grant proceedings suspended under Rule 13(1) EPC. Its auxiliary request was that the examining division's decision of 27 October 1994 be set aside and, if the board intended not to allow the appeal, that oral proceedings be held. In either case, it also requested refund of the appeal fee.

VII. On 7 December 1994, the present board issued an interlocutory decision to the effect that the suspensive effect of this - admissible - appeal deprived the first-instance decision of all legal effect pending a final decision on the present appeal.

It therefore ordered the EPO to publish a correction in the European Patent Bulletin, informing the public that 7 December 1994 was not to be considered the date of grant, within the meaning of Articles 64(1) and 97(4) EPC, of European patent No. 0 475 825 corresponding to European patent application No. 91 402 380.9.

The necessary correction was published in the European Patent Bulletin on 15 February 1995.

VIII. On 13 December 1994, the board issued a communication to the appellant and the applicant under Article 110(2) EPC, indicating that the formal and substantive conditions stipulated in Rule 13(1) EPC appeared prima facie to have been fulfilled and that the appeal could be allowed.

IX. In its reply received on 12 January 1995, the appellant argued that the European patent applicant - Soludia - was not a party to the appeal proceedings as of right, because the proceedings concerned only the appellant (the third party requesting suspension of the proceedings under Rule 13 EPC) and the EPO. Moreover, once the appellant had produced evidence that an action had been brought to establish its right to the grant of a European patent, the EPO was obliged to suspend the proceedings; Rule 13 was mandatory.

X. In its reply, received on 3 February 1995, Soludia, the patent applicant, presented the following arguments:

The contested decision had rightly drawn a distinction between the "end of the proceedings for grant ", which was determined by the date on which the decision to grant was sent to the EPO post room, and the "taking effect of the decision to grant", which commenced on the date of publication of the mention thereof in the European Patent Bulletin. To decide that the time limit for applying Rule 13(1) was determined by the second of those dates would be at odds with the stringent requirements regarding legal certainty that notification of a decision had to meet. In particular, this would unduly extend the time limits, to the detriment of the applicant who by that date had to have taken all necessary steps to meet the requirements of various states under Article 65(1) EPC; in acting late, the appellant was seeking more to harm the applicant's interests than to protect its own - an attitude which constituted an abuse of the law. Moreover, the appellant's claim to ownership related merely to a part of the patent application concerning a single embodiment, not to the whole invention.

Soludia's main request was that the decision be upheld; its auxiliary request was for oral proceedings.

XI. On 4 April 1996, the appellant provided the board with a copy of a transfer of ownership signed by the two parties and certifying that the application in question was now owned jointly and equally by Soludia S.A. and the appellant, Renacare Ltd. At the same time, under Rule 20 EPC, the parties requested that the transfer of the application be entered in the Register of European Patents in the joint names of Soludia S.A. and Renacare Limited. On 24 April 1996, the EPO notified the parties that the transfer had been registered with effect from 4 April 1996.

XII. As a result, the two parties withdrew their requests for oral proceedings.

Reasons for the Decision

1. The interlocutory decision taken in the present case on 7 December 1994 already held the appeal to be admissible.

2. Concerning the patent applicant's right to be a party to the present proceedings

2.1 The persons entitled to appeal and to be parties to the proceedings are indicated in Article 107 EPC: "Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right". In the decision under appeal, the applicant was not considered to be a party to the proceedings and was therefore not given a hearing.

The present board considers it right not to hear the applicant in cases of suspension of proceedings. Rule 13 EPC, which sets out the circumstances in which grant proceedings may be suspended, says nothing about this: provided the conditions stipulated in Rule 13 are met, the EPO must suspend the grant proceedings ex officio without having to give the applicant a hearing or take a formal decision. The automatic and immediate nature of suspension is justified by the fact that it constitutes a preventive measure in favour of the third party requesting it, and also by the need to maintain in full the rights derived from grant of the patent in dispute. If there were a delay between the request for suspension and actual suspension, the rights to the patent could be lost during that time, eg because of non-payment of a fee.

2.2 The present board does not, however, consider that this can result in an applicant's being excluded from appeal proceedings initiated by a third party against a decision refusing to suspend the proceedings.

2.2.1 A request filed by a third party under Rule 13 EPC is part and parcel of the grant proceedings and would serve no purpose outside those proceedings. The request does not initiate separate proceedings. If the conditions stipulated in Rule 13 EPC are met, the EPO must - as was stated earlier - suspend the grant proceedings; it does not have to take a formal decision. This cannot be considered contrary to Article 113(1) EPC, since the applicant is informed of the suspension of the proceedings and can then oppose it. It could, for example, claim that the facts and documents on which the third party has based its request for suspension are not legitimate. The EPO then has to lift the suspension or dismiss the objection. In the latter case, a formal decision has to be taken and the applicant can then appeal, because the EPO has not acceded to its request. If, instead, in response to an objection, the EPO lifts the suspension, the third party can appeal, for the same reason.

2.2.2 It can happen, however, that the EPO rejects the request for suspension - as in this case - because it considers the grant proceedings to be closed. In that case, a formal decision is necessary, since rejection of the third party's request opens up the possibility of appeal. Once the third party's request has been rejected and that party can therefore appeal, the reasons for not giving the applicant a hearing give way to the applicant's rights under Article 107, second sentence, EPC. Whether the suspension has been ordered without a decision (see point 2.2.1 above) or rejected by a formal decision, as in the present case, it is the patent grant proceedings which lead to that suspension or decision, not the request itself. As stated earlier, the request does not initiate separate proceedings within the grant procedure. Instead, where the requirements are met, the EPO has to accede to it ex officio under the specific provisions of Rule 13 EPC, and, if it has to be rejected for some reason, that rejection must be an appealable decision. Any ensuing appeal is governed by all the EPC provisions relating to appeals, including Article 107. It follows therefore that the applicant is party as of right to the present appeal proceedings.

3. Concerning the suspension of proceedings

3.1 Rule 13(1) EPC stipulates that if a third party provides proof to the EPO that it has opened proceedings against the applicant for the purpose of seeking a judgment establishing that it is entitled to the grant of the European patent, the Office must stay the proceedings for grant unless the third party consents to the continuation of such proceedings - which is not so in the present case. According to the case law of the boards of appeal, if the third party provides the EPO with proof that it has opened proceedings before a national court, the proceedings have to be stayed unless the European patent application has been withdrawn or is deemed withdrawn (T 146/82, OJ EPO 1985, 267).

3.2 As a third party within the meaning of Rule 13(1), the appellant provided evidence that appropriate proceedings had been brought against the patent applicant before the court of first instance (Tribunal de Grande Instance) in Toulouse with a view to establishing that it was entitled to the grant of the European patent. This fact is not contested. On the date on which the request for suspension of the EPO proceedings was received, namely 27 October 1994, the European patent application was neither withdrawn nor deemed to be withdrawn. To establish whether the present appeal was well-founded, it was therefore necessary to decide whether or not, on that date, the decision to grant the patent had taken effect. This is why the parties were invited to comment on the board's prima facie finding that this was indeed the case (see point VIII above).

4. As it turned out, however, the parties agreed between themselves - after the interlocutory decision of 7 December 1994 - to joint ownership of application No. 91 402 380.9. Once they had provided evidence of their agreement to the appropriate EPO department, this transfer of ownership was recorded in the Register of European Patents, with effect from 4 April 1996. As a result, the request for suspension of the proceedings under Rule 13(1) EPC is no longer justified and Renacare, now co-owner of the right to the patent, is no longer entitled to act. Nor can this be disputed by Soludia, co-signatory to the transfer document transmitted to the EPO on 4 April 1996. For the same reasons, therefore, the appeal has to be dismissed.

5. In the present case, the grant proceedings could not be continued for the reasons set out in the aforementioned decision of 7 December 1994. However, once evidence was produced that the parties had agreed to joint ownership of the right to grant of the patent, the request for suspension of the proceedings became groundless and, in the absence of an appeal, the EPO was in a position to resume those proceedings. In view of the suspensive effect of the present appeal, however, the conditions for doing so are not met until the date on which the present decision takes effect, ie the moment at which the dispute between the two parties is considered to have no basis.

6. Since the present appeal has not been allowed, the request for reimbursement of the appeal fee is rejected.

ORDER

For these reasons it is decided that:

The appeal is dismissed.