1.3. Suspensive effect of the appeal

Under Art. 106(1), second sentence EPC, an appeal has suspensive effect. The Legal Board of Appeal defined this effect in J 28/94 (OJ 1995, 742), in which a third party claimed entitlement to the grant of the patent and requested suspension of the proceedings for grant under R. 13(1) EPC 1973. The board took the view that the appeal's suspensive effect meant the contested decision had no legal effect until the appeal was resolved. Otherwise the appeal would be nugatory. Thus, if a decision refusing to suspend the publication of the mention of grant of a patent were appealed, publication should be deferred until the appeal was decided. If (as here) this was not possible for technical reasons, the EPO should take all necessary steps to advise the public that the mention of grant was no longer valid (see also T 1/92, OJ 1993, 685).

In J 12/16 the examining division had had the mention of the grant of the patent published while the period for appealing against the Legal Division's rejection of a request for the application's transfer was still running. The board held that doing so could cause serious problems because publishing the mention of the grant triggered the start of the period for opposing the patent; that, in turn, could make the appeal redundant while the appeal proceedings were still pending, even though the appeal itself had suspensive effect. Since, as long as the appeal period had not expired, in theory the filing of an appeal, and so the suspensive effect under Art. 106(1) EPC, had to be expected at any moment (see also J 28/94), publishing the mention of the grant should be avoided in such circumstances so as not to deprive the appeal of its suspensive effect in practice.

According to J 28/03 (OJ 2005, 597), suspensive effect means that the consequences following from an appealed decision do not immediately occur after the decision has been taken. Actions normally taking place after a decision are "frozen". Suspensive effect does not have the meaning of cancellation of the appealed decision. Even after an appeal the decision as such remains and can only be set aside or confirmed by the board of appeal. Moreover, the status of a divisional application filed while an appeal against the decision to grant a patent on the parent application is pending depends on the outcome of that appeal.

In T 591/05, the suspensive effect of an appeal was said to be a direct consequence of, and was subordinate to the appeal itself and, consequently, no circumstance directly arising from the suspensive effect of the appeal could be invoked in support of the admissibility of the appeal itself.

In J 18/08 the applicant failed to appoint a professional representative (Art. 133(2) EPC) and the application was refused by the Receiving Section under Art. 90(5) EPC. A notice of appeal was filed by a professional representative, who notified the EPO at the same time that he had been appointed as the representative in this application. The board held that when the appeal was filed, the deficiency (on which the refusal was based) was corrected. Thus the underlying ground for the refusal had been overcome and the reasoning in the decision under appeal no longer applied. It was noted that this case was different from the situation where the non-observance of a time limit automatically leads to the application being deemed to be withdrawn. In such a case the legal consequence automatically ensues when an act required within a specific time limit is not performed, without any decision to be taken concerning the refusal of the application. By contrast, if the application is refused under Art. 90(5) EPC the deficiency on which the decision is based can be corrected at the appeal stage. Accordingly, the appeal was allowed.

In T 1674/12 the board noted that under Art. 106(2) EPC a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal. This second sentence made clear that the department taking the decision remained in charge of the proceedings until a decision terminating them was taken or until it allowed a separate appeal. Under Art. 106 EPC, in procedural situations like that at issue, it was up to the opposition division to decide whether to allow a separate appeal. The parties had no rights in that respect. If, as in the case in question, the opposition division had not expressly allowed a separate appeal in its decision, it was entitled to find that an appeal nevertheless filed did not meet any of the conditions of Art. 106(2) EPC, and in particular those of its second sentence.

Quick Navigation