Résumé de EPC2000 R 142 pour la décision J0009/21 du 23.11.2022

In J 9/21 the Legal Division had declared with its communication dated 26 July 2019 that the opposition proceedings had been interrupted as from 11 November 2016 (i.e. as from the day after the expiry of the opposition period) and that they would be resumed on 4 November 2019. After issuing a communication and holding oral proceedings, the Legal Division issued the decision on the interruption of the opposition proceedings on 9 July 2021. The opponent appealed. During the aforementioned interruption period, the opposition division had revoked the European patent and the patent proprietor had filed an appeal against that decision (appeal number T 967/18). The appealed decision in J 9/21 was the decision of the Legal Division dated 9 July 2021. The Legal Board of Appeal found that the Legal Division had the power to determine an interruption of the proceedings. On the question of whether the conditions of R. 142(1)(b) EPC had been fulfilled, the Legal Board noted that the mere fact that there was no bankruptcy judgment and that the former patent proprietor entered voluntarily into external administration under the Australian Corporations Act did not speak against the application of R. 142(1)(b) EPC. Once the external administrator had been appointed, voluntarily or involuntarily, according to Section 437D of the Australian Corporations Act only the external administrator could deal with a company's property. As the disputed patent was part of the former patent proprietor's company property at the relevant point in time, the former patent proprietor was indeed "prevented by legal reasons from continuing the proceedings". Thus, the conditions for an interruption under R. 142(1)(b) EPC were fulfilled. According to the Legal Board, the mere fact that an applicant or patent proprietor continued proceedings before the EPO did not allow any conclusions to be drawn as to whether they were legally prevented from doing so. The interruption of proceedings under R. 142(1)(b) EPC by force of law rather ensured that acts undertaken by applicants or patent proprietors which continued the proceedings even though they were not legally allowed to do so were invalid and therefore could not be detrimental to the legitimate interests of third parties. The Legal Board in the present case did not understand J 11/95, cited by the appellant, as relying merely on the factual continuation of the proceedings by the applicant to arrive at the conclusion that the applicant was legally not prevented from doing so. Rather, it seemed that the board in J 11/95 was of the opinion that, in view of the evidence provided, national bankruptcy in that specific case had not legally prevented the company concerned from continuing the proceedings before the EPO. In relation to the appellant's request to set aside the decision under appeal, or, alternatively, to set 21 February 2017 as the new date of resumption of proceedings, the Legal Board noted that allowing the appellant's requests would require the interruption to be set aside with retroactive effect. According to the case law, this would not be possible even if the declaration of interruption was erroneous. Following this case law, the appellant's main and auxiliary requests could not be allowed for that reason alone. The Legal Board recalled that the reasons invoked in the case law 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. Furthermore, the public had legitimate expectations that the dates of interruption and resumption entered into the European Patent Register were correct. Moreover, according to the Legal Board, the Legal Division was not barred from issuing a communication on the interruption of the proceedings without hearing the parties beforehand as a matter of principle. However, if it did not hear the parties beforehand, it had to hear them afterwards. Having heard the parties, the Legal Division had to be open to arrive at a conclusion deviating from its initial assessment. According to the case law, it may be that procedural acts which were carried out during the period for which the interruption was declared had to be repeated even if the Legal Division itself, after having heard the parties, considered its previous declaration of interruption erroneous. The Legal Board noted that in some cases, particularly if entire opposition proceedings had been conducted during the relevant period, the expected legal consequences of the interruption may indeed require the Legal Division to hear the parties before issuing a declaration of interruption.