Under R. 14(1) EPC (R. 13(1) EPC 1973) the EPO must stay the proceedings for grant ex officio if a third party provides it with evidence (under the EPC 1973, 'proof') that he has instituted proceedings against the applicant seeking a decision within the meaning of Art. 61(1) EPC (see J 28/94, OJ 1997, 400; T 146/82, OJ 1985, 267; J 10/02, J 6/10, J 7/10), unless the third party communicates to the EPO in writing his consent to the continuation of such proceedings. The patentee will not be heard but may file a request with the Legal Division not to suspend proceedings. An appeal may be filed against the Legal Division's decision adversely affecting the applicant, proprietor or third party respectively (J 28/94, OJ 1997, 400).
Decision J 15/06 followed J 28/94 (OJ 1997, 400). The communication ordering suspension was considered to be a preliminary procedural measure "sui generis" which was justified as a preventive measure to preserve the third party's possible rights to the patent in dispute and took immediate effect. The respondent's withdrawal of its request for suspension of the proceedings significantly changed the procedural situation in the appeal proceedings. However, the existence of a legitimate interest of a third party was an unwritten prerequisite for a further stay of the proceedings under R. 13 EPC 1973. The withdrawal was therefore equivalent to and to be interpreted as consent to the continuation of the proceedings pursuant to R. 13(1) EPC 1973. See also J 18/06.
The grant proceedings ended on the date on which the European Patent Bulletin mentioned the grant (Art. 97(4) EPC 1973). In the interim period, proceedings for grant were still pending before the EPO and a request for suspension of proceedings under R. 13 EPC 1973 was admissible (J 7/96, OJ 1999, 443). See also J 33/95, J 36/97, J 15/06, according to which the EPO can also order suspension pursuant to R. 13(1) EPC 1973 after the publication of the mention of the grant of a patent was acknowledged provided that an allowable request had been filed before the publication. Suspension of the proceedings for grant meant that the legal status quo existing at the time they were suspended was maintained, i.e. neither the EPO nor the parties might validly perform any legal acts while the proceedings were suspended (J 38/92 and J 39/92).
In J 20/05, G 1/09 and J 9/12 the boards established that R. 14 EPC prevents the filing of a divisional application if the proceedings for grant concerning the earlier application are stayed. In J 9/12 the board held that an application filed after the effective date of the stay of proceedings concerning the parent application, but before communication of stay, is to be treated as a divisional application.
In J 10/02 the appellant argued that in the case where an appeal was lodged against a decision to suspend grant proceedings, the provision of R. 13 EPC 1973 appeared to be in conflict with the provisions of Art. 106(1) EPC 1973. The board, however, pointed out that the suspensive effect of an appeal served to provide an appellant with provisional legal protection in the sense that no action should be taken to implement the decision of the department of first instance in order not to deprive the appeal of its purpose. However, if the grant proceedings were continued and the appellant were to arrive at a definitive end to the grant proceedings in its favour, this would be more than the appellant could achieve if it succeeded with the appeal under consideration.
Date retrieved: 30 December 2018