3.2. ‍‍Rule 14(3) EPC

Under R. 14(3) EPC (R. 13(3) EPC 1973), upon staying the proceedings for grant, the EPO may set a date on which it intends to resume the proceedings for grant, regardless of the stage reached in the national proceedings under R. 14(1) EPC. It is clear from the wording of R. 14(3) EPC that this is a discretionary decision (J 33/03).

When exercising its discretion under R. 13(3) EPC 1973, the board in J 10/02 took into account the fact that the entitlement proceedings only concerned part of the invention and the duration of the suspension.

In parallel decisions J 6/10 and J 7/10 the legal board held that some aspects of the exercise of discretion under R. 14(3) EPC are (i) how long the proceedings before the national courts/authorities have been pending (with a period of more than four years held to be considerable both for grant proceedings to be stayed and for entitlement proceedings to be pending in first instance) (ii) the duration of the suspension of grant proceedings, and (iii) requests for suspension of grant proceedings filed at a late stage.

In J 15/13 the board held that the filing of the request under R. 14(1) EPC at the last possible moment may only be taken as an argument for the resumption of the grant proceedings if such behaviour appears to be a misuse of the respondent's right to a stay of the grant proceedings.

In J 4/17 the board held that the legislator left it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis. Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction. However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.

In J 13/12 the board decided in the light of J 33/03 that, unlike the position under R. 14(1) EPC, R. 14(3) EPC gave the EPO discretion to decide whether proceedings were to be resumed. In exercising its discretion under R. 14(3) EPC, it had to weigh the interests of the applicant up against those of the third party which had brought a national action to determine rights against the applicant. The Guidelines for Examination, as internal administrative guidelines, could also be consulted; but they gave no indication that the national proceedings had to be finally closed, where applicable after exhaustion of all legal remedies, before a date for resuming the grant proceedings could be set, or at any rate before they could actually be resumed.

In J 1/16, the Legal Board held that where, when deciding not to resume proceedings, the Legal Division had properly identified and exhausted its scope for discretion and weighed up the situation in the light of all the relevant factors, without being influenced by anything irrelevant and without making any logical mistakes in its assessment of the facts, it was not open to the Legal Board to exercise its own discretion in the Legal Division's place. Where a decision is basically to be upheld, a subsequent change in circumstances (in the case in hand: an appeal court ruling in national entitlement proceedings) can nevertheless present a ground for adapting it.

The board held in T 146/82 date: 1985-05-29 (OJ 1985, 267) that if, in accordance with R. 13(3) EPC 1973, the EPO set a date on which it intended to continue the proceedings for the grant of the European patent, the date might be varied or the order staying the proceedings might be discharged at the subsequent request of the applicant or of the third party who applied for the order.