1.2. Continuation of the opposition proceedings after lapse or surrender (Rule 84(1) EPC)

If a European patent has lapsed or been surrendered in all the designated states, the opposition proceedings may, under R. 84(1) EPC (R. 60(1) EPC 1973), be continued at the request of the opponent, provided the request is filed within two months of a communication from the EPO informing the opponent of the surrender or lapse. R. 84(1) EPC is limited to the situation where the opposed patent has been surrendered or has lapsed during ongoing opposition proceedings. Where the patent had already lapsed prior to the filing of the opposition R. 75 EPC applies, which states that an opposition may be filed even if the opposed patent has been surrendered or has lapsed in all the designated contracting states (T 606/10).

R. 84(1) EPC also applies, pursuant to Art. 111(1) EPC and R. 100(1) EPC, to opposition appeal proceedings, T 2165/08 of 6 March 2013 date: 2013-03-06, T 702/15.

Where the European patent expires during ongoing appeal proceedings in all the contracting states and the appellant (opponent) does not request continuation of the proceedings, the proceedings are terminated without any decision on the issues (T 329/88, followed by numerous decisions, including T 762/89, T 749/01, T 289/06, T 949/09, T 480/13 and T 977/14).

R. 84(1) EPC establishes no legal obligation on the EPO to ascertain of its own motion the legal status of a European patent and does not apply in the event of an alleged surrender or lapse of a European patent, unless confirmation thereof has been received by the EPO from the appropriate authorities of all the designated contracting states (T 194/88, T 809/96, T 201/04). However, in some exceptional circumstances, the proceedings have been terminated where such evidence was missing. In T 762/89 the respondent (patent proprietor) had submitted that the patent had lapsed following non-payment of the national renewal fees in the designated contracting states (AT, BE, DE, FR, GB, IT, LU, NL und SE). EPO records showed that the European patent had lapsed in 1990 in all the designated contracting states except Italy and Luxembourg, and the respondent provided confirmation that the patent had lapsed in Italy with a letter of 7 January 1992. Since the respondent had expressly declared on a number of occasions that the patent had lapsed in all the designated states, the board held that, with a view to procedural economy, there was no valid reason why the respondent should be required to show that it had lapsed in Luxembourg as well. In T 607/00 the board accepted the respondent's statement, which was not challenged by the appellant, that the patent had lapsed in Italy.

If the appellant (opponent) expressed doubts concerning a respondent's (patent proprietor's) claim that a patent had lapsed or been surrendered, then the lapse had to be registered with the EPO or properly proved. Otherwise, R. 60(1) EPC 1973 was not applicable and the appeal procedure continued (T 194/88, T 682/91, T 833/94, T 201/04).