T 2536/10 () of 13.1.2014

European Case Law Identifier: ECLI:EP:BA:2014:T253610.20140113
Date of decision: 13 January 2014
Case number: T 2536/10
Application number: 99932266.2
IPC class: C10M 137/02
C10M 141/10
C10M 163/00
C10M 167/00
Language of proceedings: EN
Distribution: D
Download and more information:
Decision text in EN (PDF, 226 KB)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Applicant name: The Lubrizol Corporation
Opponent name: New Market Services Corporation
Board: 3.3.01
Headnote: -
Relevant legal provisions:
European Patent Convention R 100(1)
European Patent Convention R 84(1)
Keywords: Surrender of patent in all designated states - continuation of appeal proceedings (no)


Cited decisions:
G 0002/97
R 0004/09
T 0708/01
Citing decisions:
T 0541/15
T 1492/17

Summary of Facts and Submissions

I. The patent proprietor (appellant) lodged an appeal against the decision of the opposition division posted on 21 October 2010, by which European patent No. 1 056 819 was revoked.

II. By communication of the board of 10 May 2013, the parties' attention was drawn to the fact that the patent had meanwhile lapsed in all designated contracting states, and the appellant was asked to inform the board whether it requested a continuation of the appeal proceedings.

III. The appellant did not reply within the time limit of two months. Upon inquiry by the registrar, the appellant informed the board that it had not received the communication. The communication was sent a second time to the appellant on 6 September 2013, in order to ascertain that it was duly notified to the parties.

IV. With letter received on 6 September 2013, the appellant confirmed that the patent had been allowed to lapse in all designated states. It did not request a continuation of the appeal proceedings. No further reply was received.

Reasons for the Decision

1. If a European patent has lapsed in all designated contracting states, opposition proceedings may be continued at the request of the opponent (Rule 84(1) EPC). According to Rule 100(1) EPC, this also applies in appeal proceedings following opposition proceedings. However, if, as in the present case, the patent proprietor is the appellant, it would be inappropriate to allow the opponent(s) (respondent(s)) to decide whether the appeal proceedings shall be continued. For this reason, Rule 84(1) EPC has to be applied mutatis mutandis in such opposition appeal proceedings so that it is the patent proprietor who can request that the appeal proceedings be continued (see decision T 708/01 of 17 March 2005, point 1 of the Reasons).

2. Users of the European patent system have the responsibility to take all necessary steps to avoid a loss of rights (G 2/97, OJ EPO 1999, 123, point 4.2 of the Reasons; R 4/09 of 30 April 2010, point 2.3.2 of the Reasons). In its reply of 6 September 2013, the appellant confirmed that the patent had been allowed to lapse in all designated states, but did not file any requests with respect to the continuation of appeal proceedings. This is interpreted as meaning that the appellant did not wish to request continuation. Under these circumstances, the board sees no reason to continue the appeal proceedings of its own motion. Therefore, the appeal proceedings are terminated.


For these reasons it is decided that:

The appeal proceedings are terminated.

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