4.8. Consequences of interruption of proceedings (Rule 142(4) EPC)

Rule 142(4), first sentence, EPC (R. 90(4), first sentence, EPC 1973) states that the time limits in force as regards the applicant for or proprietor of the patent at the time of interruption of the proceedings shall begin again as from the day on which the proceedings are resumed. Rule 142(4) EPC includes two exceptions in this respect, namely the time limits for making a request for examination and for paying renewal fees. Rule 142(4) EPC does not, however, constitute an exception to the general principle that all time limits are interrupted. Its sole purpose is to specify how time limits are to be calculated when proceedings resume (J 7/83, OJ 1984, 211).

The board in T 1389/18 (citing J 9/06) observed that proceedings could only be resumed with ex nunc effect.

In J 10/19, the Legal Board stated in its catchword that, whereas a finding that proceedings have been interrupted owing to the patent (co-)proprietor's insolvency was usually made retroactively, it could be reversed only with ex nunc effect. A retroactive reversal was out of the question, even in isolated individual cases after weighing up the interests concerned. It was instead a matter of law that had to be regulated generally. In the same vein, in J 9/21 the Legal Board observed that it was not possible to set aside a declaration of interruption by the Legal Division with retroactive effect, not even if it was declared erroneously. The reasons invoked in the case law cited by the Legal Board included that otherwise time limits which had been declared by the Legal Division to be interrupted could, from the parties' perspectives, be shortened or expire retroactively (J 10/19) and that members of the public had legitimate expectations that the dates of interruption and resumption entered into the European Patent Register were correct (J 10/19).

In J 7/83 (OJ 1984, 211) the Legal Board held that in the event of proceedings for grant of a European patent being interrupted because the applicant company has gone into receivership (R. 90(1)(b) EPC 1973), the period prescribed by Art. 94(2) EPC 1973 for payment of the examination fee is suspended as from the date on which payments were discontinued by court order up to the date on which proceedings for grant are resumed (R. 90(2) EPC 1973). The period then resumes for the part remaining to elapse, or for at least the two months prescribed by R. 90(4), second sentence, EPC 1973. In J 902/87 (OJ 1988, 323) the Legal Board stated that such an interpretation could not be applied to renewal fees, for which the EPC did not prescribe a time limit for payment but simply dates on which they fell due. The only time limit affecting renewal fees that might be suspended was the six-month period for paying the renewal fee together with an additional fee referred to in Art. 86 EPC 1973. Rule 90(4) EPC 1973 had to be interpreted as deferring, until the date proceedings are resumed, the payment date for renewal fees which had fallen due during the period of the representative's or applicant's incapacity.

The board in T 854/12 held that, if a board was satisfied that the proceedings had been interrupted, this meant not only that any periods running at the time were suspended (R. 142(4) EPC) but also that the board could not hold oral proceedings or issue a decision in written proceedings.

In T 1389/18 the board came to the conclusion that any oral proceedings taking place during an interruption and any decision announced at them by the opposition division had to be retrospectively deemed non-existent. The appeals before the board were therefore also devoid of purpose, such that the appeal proceedings had to be ended without a decision on the merits of the case (see also J 10/19, point 6 of the Reasons). The board in T 967/18 reiterated that where opposition proceedings have been interrupted under R. 142(1)(b) EPC, acts done by the parties or the competent body of the EPO during the period of interruption were considered invalid. Furthermore, an appeal against a decision taken during the interruption was inadmissible because it has no valid subject eligible for a judicial review.

Any EPO communications and decisions issued in the period between the date of interruption and the date of resumption are devoid of purpose and must be reissued once the proceedings have been resumed (T 54/17).

In T 956/19 the Board emphasised that R. 142(4) EPC did not apply to time limits that neither the applicant nor patent proprietor were required to observe, such as the opposition period under Art. 99(1) EPC. The wording of R. 142 EPC alone supported this. Since other parties’ inability to act in the proceedings did not constitute grounds for interruption, the time limits applicable to such parties were not taken into consideration when applying R. 142(4) EPC.

In J 12/19 the Legal Board explained that the proceedings before the Legal Division relating to interruption and resumption of the opposition proceedings before the opposition division were intermediate proceedings in relation to the opposition proceedings. Where opposition proceedings were interrupted and the Legal Division intended to resume proceedings or where it refused to resume the proceedings, the outcome of the intermediate resumption proceedings had an immediate impact on the opponent's legal position. Any decision taken in such proceedings might (adversely) affect the opponent's legal position. The opponent could not be required to defend its rights only subsequently in the main (opposition) proceedings, after they had been resumed. Such a requirement would delay proceedings and might cause additional costs. Therefore, the Legal Board was of the view that the opponent (appellant) was party to the resumption proceedings.