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Case Law of the Boards of Appeal

 
 
6. Acceleration of proceedings in the case of pending infringement proceedings

If the opposition division is unable to process an opposition case speedily on account of the amount of work in hand, the Guidelines D-VII, 1.1 stipulate that it should, in principle, process submissions in order of receipt. The Guidelines then list the exceptional cases in which an opposition must be given priority, as laid down in two EPO notices dated 19.05.1998 (OJ 1998, 361 and 362): the EPO will accelerate the processing of an opposition if it is informed by a party to the proceedings or by the national court or other competent authority of a contracting state that infringement actions are pending (see Guidelines E-VII, 4 – June 2012 version).

T 290/90 (OJ 1992, 368) gave the board of appeal the opportunity to comment on accelerated processing of oppositions and appeals. In a case involving seven oppositions, one had been rejected on formal grounds, leading the opponent to file an appeal on 12.04.1989. A communication under R. 112(1) EPC (former R. 69(1) EPC 1973) stating that the opposition was deemed not to have been filed was issued on 2.06.1989, followed by a decision under R. 112(2) EPC (former R. 69(2) EPC 1973) on 29.01.1990. The patent proprietor requested accelerated processing of the appeal because an infringement action was pending and, in view of the probable number of infringing products on the market, the longer the opposition proceedings took, the more difficult it would be for him to enforce the patent.

The board held that accelerated processing was a basic principle of procedural law. It was essential for patents to be enforceable in practice, and timing was often a matter of great importance for patent proprietors and their competitors. It was therefore important not only to rule on the appeal quickly but also to bring the opposition proceedings to a speedy conclusion. Hence, if several oppositions were filed and the admissibility of one of them was questioned, the opposition had to be processed up to the point where it was ready to be decided at the same time as the appeal was being examined, so that the opposition could be decided soon after completion of the appeal proceedings. Pursuant to Art. 106(1), second sentence, EPC, the potentially inadmissible opposition had to be considered admissible unless and until the board of appeal decided otherwise.