T 1738/16 (Allergen extract/ALK-ABELLÓ) of 16.9.2019

European Case Law Identifier: ECLI:EP:BA:2019:T173816.20190916
Date of decision: 16 September 2019
Case number: T 1738/16
Application number: 06005128.1
IPC class: A61K 39/36
Language of proceedings: EN
Distribution: D
Download and more information:
Decision text in EN (PDF, 245 KB)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Title of application: Process for producing an allergen extract
Applicant name: Alk-Abelló A/S
Opponent name: Merck Patent GmbH
Board: 3.3.04
Headnote: -
Relevant legal provisions:
European Patent Convention R 84(1)
European Patent Convention R 100(1)
Keywords: Lapse of patent in all designated states - continuation of opposition proceedings (no)


Cited decisions:
T 0329/88
T 0708/01
T 0018/13
Citing decisions:

Summary of Facts and Submissions

I. The patent proprietor (appellant) filed an appeal against the decision of the opposition division dated 27 May 2016 revoking European patent No. 1 834 648.

II. In a communication of the board pursuant to Rules 84(1) and 100(1) EPC dated 28 June 2019, the board drew the partie's attention to the fact that according to the European Patent Register the European patent had lapsed with effect for all the designated Contracting States. The appellant was invited to indicate, within two months from notification of the communication, whether a continuation of the appeal proceedings was requested. The appeal proceedings would be terminated if no request for the continuation of the proceedings was filed and the state of the file gave no grounds for the procedure to be continued by the board of its own motion.

The opponent (respondent) was given the opportunity to file comments within the same time period.

III. With letter dated 19 August 2019 the appellant informed the board that they did not wish to request continuation of the appeal proceedings.

The respondent filed no comments within the set time period.

Reasons for the Decision

1. Rule 84(1) EPC provides that "if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from the European Patent Office informing him of the surrender or lapse."

2. Pursuant to Rule 100(1) EPC and in the absence of provisions stating otherwise, Rule 84(1) EPC also applies in appeal proceedings following opposition proceedings, i.e. the appeal proceedings may be continued at the request of an opponent-appellant. Furthermore, according to an interpretation argumentum a contrario, if no request for continuation of the proceedings is filed within the set time period and the state of the file gives no grounds for the proceedings to be continued by the board of its own motion, the appeal proceedings will be terminated (see e.g. decisions T 329/88 and T 18/13).

3. However, if - as in the present case - the patent proprietor is the sole appellant, it would be inappropriate to allow an opponent-respondent 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, for example, decision T 708/01).

4. In the present case the appellant, in reply to the invitation by the board, stated that they do not request a continuation of the appeal proceedings.

5. The board sees no reason to continue the appeal proceedings of its own motion. Hence, the appeal proceedings are to be terminated (see point 2 above).


For these reasons it is decided that:

The appeal proceedings are terminated.

Quick Navigation