J 0015/06 (Suspension of grant proceedings/ALLERGAN) 30-11-2007

I. The appeal lies from the decision of the Legal Division dated 30 January 2006 stating that the decision to suspend grant proceedings, in respect of European patent application no. 04 019 048.0, contained in the communication dated 10 November 2005, was maintained and proceedings before the European Patent Office (EPO) were suspended as from 28 October 2005.

II. On 29 September 2005 the Examining Division issued a decision pursuant to Article 97(2) EPC that a European patent was granted pursuant to Rule 51(4) EPC on the basis of the documents and amendments thereto filed on 6 September 2005 and that the mention of the grant was to be published in European Patent Bulletin 05/45 of 9 November 2005.

III. In a letter of 21 October 2005, received by the EPO on the same day, a third party (the respondent) filed a request for suspension of the proceedings for grant pursuant to Rule 13(1) EPC with effect from 21 October 2005, on the grounds that proceedings concerning the entitlement to the European patent application in suit had been initiated before a German court, the "Landgericht München I". Referring to decision J 36/97 of the Legal Board of Appeal, the respondent argued that the requirement in Rule 13(1) EPC "that he had opened proceedings" is satisfied if the necessary steps have been taken to open proceedings in a national court and that it is necessary for these proceedings to have been served on the appellant.

In addition, it was requested that the publication of the mention of the grant of a patent be cancelled.

IV. In a further letter, dated 28 October 2005 and received by the EPO on the same day, the respondent filed an amended request claiming that the patent application in suit be suspended with effect from 28 October 2005 and that the publication of the mention of the grant of a patent be cancelled.

In support of these requests the respondent submitted a copy of a writ showing opening of national proceedings had been opened before a different German court, the "Verwaltungsgericht München", for the purpose of seeking a judgement that it was entitled to the grant of the European patent. The copy bears a date stamp providing proof that the original document was filed with the "Verwaltungsgericht München" on 28 October 2005.

V. In a communication dated 10 November 2005 the Legal Division informed the applicant and the third party that the proceedings before the European Patent Office had been suspended in respect of European patent application no. 04 019 048.0, as from 28 October 2005 and that the third party had not consented to the continuation of the grant proceedings. In paragraph 6 of this communication it was furthermore stated that if a party had any objection, it could apply for an appealable decision by the Legal Division within two months of notification of the communication.

VI. On 22 November 2005 the Senior Formalities Officer of Directorate General 2 of the EPO sent the following statement to the Deutsches Patent- und Markenamt:

"The mention of the grant of a European patent for the above-mentioned application was/will be published on 09.11.05 (European Patent Bulletin No. 05/45).

The decision to grant a European Patent and/ or its publication is corrected as follows:

Proceedings before the EPO were stayed (R. 13 EPC) before the date of the grant of the patent.

This correction was/will be published in European Patent Bulletin no. 05/52 of 28.12.05"

The correction was published in European Patent Bulletin as announced in the statement.

VII. In a letter dated 12 December 2005 the applicant for the European patent application in suit (the appellant) requested that an appealable decision be issued.

VIII. The Legal Division issued a decision on 30 January 2006 stating that according to Rule 13(1) EPC, the decision to suspend grant proceedings, in respect of European patent application no. 04 019 048.0, contained in the communication dated 10 November 2005, was maintained and proceedings before the European Patent Office were, thus, suspended as from 28 October 2005.

IX. The appellant filed a notice of appeal with the EPO on 10 April 2006 requesting the reversal of the decision dated 30 January 2006 and continuation of the grant proceedings.

The appeal fee was paid on the same day.

X. The appellant filed a statement setting out the grounds of appeal on 26 May 2006. The appellant's grounds can be summarised as follows:

The decision of the Legal Division on the suspension of the grant of the European patent had no legal basis in the EPC. The communication of 10 November 2005 and the decision of 30 January 2006 of the Legal Division had been issued after the mention of the grant of the European patent was published in the European Patent Bulletin on 9 November 2005. This publication caused the effects set forth in Article 64(1) EPC and marked the end of the responsibility of the EPO as set forth in Article 2(1) EPC. The appellant cited decision J 7/96 of the Legal Board of Appeal where it is stated that "The mention also marks the time when the responsibility of the EPO comes to an end and the national patent systems take over; the granted patent becoming a bundle of national patents"( point 6.2 of the reasons).

The Legal Division's communication of 10 November 2005 and the subsequent decision of 30 January 2005 could only have reversed the publication of grant if the Convention provided for such communication and decision after the publication of the mention of grant. In the appellant's opinion the Convention contained no such provision.

The appellant further argued that Rule 13 EPC, unlike Rule 14 EPC, does not provide a legal basis for the suspension of the European patent application in suit to take effect as an immediate legal consequence of the proof (submitted to the EPO) that (national) proceedings have been initiated but requires a decision of the EPO on the requested suspension with the legal effect that the proceedings can only be stayed as of the date of the decision. Rule 13 EPC does not provide means for suspending by way of fiction the proceedings as of the date of filing of the third party's request.

Neither the decision to suspend proceedings after grant nor the retroactive effect of that decision could be justified by the imminent publication of the grant at the point in time when the request had been filed. While a submission under Rule 13 EPC was admissible as long as the application was pending, filing a request at such a late point in time would prove too late and thus be ineffective. When a third party wished to prevent the publication of the mention of the grant of the patent then it had to file the request early enough for the EPO to be able to comply with the request. The concept that a late filed request may have no effect would not be alien to the EPC. In this regard, the appellant referred to Rule 48(2) EPC and the corresponding Notice from the European Patent Office dated 14 December 1992 concerning the withdrawal of an application to prevent publication.

The appellant submitted further objections concerning the alleged violation of its procedural rights. It argued that whenever the rights of an applicant are affected under the EPC, the Convention either stipulates an immediate legal consequence (e.g. Article 97(3) EPC) or calls for a decision in the sense of Article 106 EPC, as is also apparent from Rules 68 to 70 EPC. Any decision taken by the EPO requires that the party concerned must be heard according to Article 113(1) EPC before the decision is issued. The procedure adopted by the EPO in the present case did not comply with these requirements and had no legal basis in the Convention. The harsh consequences of a suspension could not be associated with some sort of internal act or decision-like procedure. The violation of Article 113(1) EPC had not been remedied by issuing a communication and only then issuing the decision because the effects of the later decision had already taken effect when the communication reached the appellant. In the appellant's view, the procedure in the present case could also not be justified by the sketchy, and in part incorrect, considerations set forth in decision J 28/94 (OJ EPO 1997, 400). Contrary to this decision, the appellant argued that the rights of a third party as an allegedly entitled person would be sufficiently safeguarded by the provisions of Rule 14 EPC even if there is some time between the filing of the request for suspension and the actual suspension of the proceedings by the EPO. In any event, the considerations set forth in this decision would not justify a breach of the most fundamental procedural principles and the handling of Rule 13 EPC requests outside the framework stipulated by the European Patent Convention.

The appellant submitted that when taking a decision on the basis of Rule 13 EPC, the underlying facts had to be assessed as to whether or not all requirements pursuant to Rule 13 EPC were fulfilled. In the present case, the EPO had gone beyond this assessment and had felt it appropriate to telephone the third party and had provided it with legal advice despite the fact that the matter discussed had affected the appellant's procedural rights. Notwithstanding the fact that this had been a severe violation of the principle of fairness and impartiality on the part of the EPO, it showed that, contrary to the decision J 28/94, the procedure under Rule 13 EPC was not "automatic" and that it did require some consideration on the part of the EPO before a decision on suspension could be issued.

The appellant also argued that the respondent's request for suspension was unrelated to Article 61 EPC and obviously abusive in nature.

Lastly, the appellant requested that the appeal fee be reimbursed.

XI. In a letter dated 28 February 2007 the respondent submitted its counter-arguments as follows:

The requirements for suspension according to Rule 13(1) EPC were fulfilled on 28 October 2005 and indisputably before the mention of the grant of the patent in the European Bulletin on 9 November 2005. Suspension of proceedings under Rule 13 EPC does not require a formal decision. The significant date for suspension is the date when these requirements are fulfilled and not the date when the communication on suspension is issued because, according to the jurisprudence of the Legal Board of Appeal, the European Patent Office must immediately stay the proceedings when the requirements are met. On 28 October 2005, the European Patent Office was still responsible for the pending application. According to decision J 7/96 of the Legal Board of Appeal (OJ EPO 1999,443), a decision of the Examining Division to grant a European patent (Article 97(2) EPC) does not take effect on the date when the decision-making process before that division is completed but on the date on which the European Patent Bulletin mentions the grant (Article 97(4) EPC). In the interim period, proceedings for grant are still pending before the EPO and a request for suspension of proceedings under Rule 13 EPC is admissible.

The respondent pointed out that appellant's right to be heard had not been violated because suspension took effect without a decision and the communication concerning the suspension merely contained information.

The present appeal did not affect the suspension of the proceedings because the claimed suspensive effect pursuant to Article 106(1) EPC would be in contradiction to the legal purpose of Rules 13 and 14 and Article 61 EPC. Additionally, the suspension of the proceedings was the result of the respondent's action and not ordered by the communication of the European Patent Office. The suspensive effect provided for in Article 106(1) EPC cannot be raised against the action of a third party.

The appellant's line of reasoning that the correction of the publication of the mention of the grant had not been validly performed by the EPO and that therefore 9 November 2005 had to be regarded as the day when the mention of the grant had been published would lead to indefensible legal results. If it were so, the respondent had missed the time limit for filing a notice of opposition because it trusted in the publication of the correction of the mention of the grant as probably did the interested public. On the other hand, the respondent should not be forced, as a precaution, to file a notice of opposition against a patent which it claims before a national court to be rightfully its own.

Therefore, the respondent requested that the appeal be dismissed.

XII. In a letter dated and received on 20 September 2006 the appellant applied for an interim decision as regards the suspensive effect of Article 106(1) EPC on the decision under appeal and requested that, in the light of Article 106(1), second sentence EPC, the European Patent Register be corrected so as to confirm the date of grant on 9 November 2005 or, as auxiliary request, that the grant procedure be resumed and that the decision to grant be published in the Bulletin without further delay.

XIII. In a faxed letter dated 27 September 2007 the respondent withdrew its requests for suspension dated 21 October 2005 and 28 October 2005.

XIV. In response to the Board's communication dated 11 October 2007, the appellant and the respondent withdrew their requests for oral proceedings on 2 November 2007 and 9 November 2005 respectively.

XV. The oral proceedings already scheduled to be held on 10 December 2007 were cancelled.