3.1.2 Opening of proceedings before a national court

According to T 146/82 date: 1985-05-29 (OJ 1985, 267), suspension had to be ordered if satisfactory proof of the opening of relevant proceedings before a national court was given to the EPO by a third party, provided that the European patent application had not been withdrawn or was not deemed to have been withdrawn.

In J 6/03 the Legal Board held that R. 13(1) EPC 1973 referred to proceedings which resulted directly, i.e. generally and automatically, in decisions mentioned in Art. 61(1) EPC 1973. The provision was therefore not applicable in respect of decisions of courts of third states (here, Canada).

In J 14/19, the Legal Board observed that R. 14(1) EPC (R. 13(1) EPC 1973) did not specify when national proceedings were deemed to have been instituted. The issue of when they became pending was therefore to be assessed under the procedural law of the country whose courts had been asked to take a decision within the meaning of Art. 61(1) EPC (see also J 2/14, T 1138/11). Art. 8 of the Protocol on Recognition 1973 supported this interpretation. It provided that, if proceedings based on the same claim to a grant of a European patent and between the same parties were brought before different courts, the court to which a later application was made had to decline jurisdiction in favour of the court to which an earlier application had been made. Which court had been applied to first had to be determined on the basis of when proceedings had become pending.

In J 36/97 the Legal Board, with reference to Art. 9(2) of the Protocol on Recognition of 5 October 1973, stated that neither the jurisdiction of the national court whose decision was to be recognised nor the validity of such decision may be reviewed by the boards of appeal (see also J 8/96, J 10/02, J 14/19). When and how legally relevant civil proceedings were opened in a contracting state was likewise determined by national law (J 7/00).

In J 9/06 the Legal Board pointed out that, according to G 3/92 (OJ 1994, 607), only the courts of the contracting states had jurisdiction to decide claims to entitlement to the right to the grant of a European patent (see also J 14/19). It was not possible for the EPO, nor was it its function in the context of the examination of a request to suspend proceedings under R. 13 EPC 1973, to examine whether the subject-matter disclosed in a European patent application in respect of which suspension was requested corresponded to the disclosure of another application, ownership of which was disputed before a national court.

In J 15/13 the Legal Board held that while it was established case law that the board was not allowed to examine the substance and merits of a national entitlement case, the board's power of examination could not be limited to merely checking whether the claim submitted with the entitlement suit was directed to the transfer of the application, but – to a certain extent – it also allowed and possibly even required a consideration of the grounds given in the complaint of the entitlement suit. The board had to verify that the national proceedings were in accordance with R. 14(1) EPC, since to request a stay of the grant proceedings was a strong weapon which could be misused.

In J 14/19, the Legal Board of Appeal held that, where the EPO was called on to apply foreign law, it had to do so within the overall context of the foreign legal system, wherever possible. When interpreting the foreign legislation to be applied, it was not bound by the case law of national courts, but if it was aware of the case law, in particular of the highest national courts, it should consider and evaluate it in coming to its decision. As regards whether instituting national proceedings might have involved an abuse of law ("Rechtsmissbrauch"), the Legal Board held that, to avoid contradictory interpretations, the EPO should rule on any such issues autonomously, i.e. irrespective of national legal systems, even when they arose in relation to staying proceedings. Improperly asserting a right could amount to an abuse of law in some cases, for instance if the right was asserted predominantly with a view to causing damage, ahead of other, legitimate aims. The abuse of law had to be established beyond any doubt; that meant carefully examining and weighing up the circumstances of the individual case, with the burden of proof falling on whoever alleged the abuse.

In T 1473/13 the appellant's request for a stay of proceedings mentioned constitutional complaints pending before the German Federal Constitutional Court (FCC) on the basis of claimed insufficient judicial relief at the EPO against decisions of the boards of appeal. With reference to one of the constitutional complaints, the board explained that the appellant in the case in hand had not stated why and how a ruling on certain provisions of the EPC, its Implementing Regulations, the RPBA and the RPEBA could impact on other board decisions with effect for Germany. For the board it was not obvious that any FCC decisions on the constitutional complaints would have direct legal implications beyond those cases concerned. The appellant had also stated no possible disadvantage from a decision of the board in the case in hand in case of success of the constitutional complaints. The board held that in the absence of an established disadvantage for the appellant, the respective adverse consequences of staying or not staying the proceedings (i.e. the delay of the proceedings) could not be balanced. Consequently, the board held that the request for a stay must be refused.