1.2.1 Request for continuation of the proceedings made by the opponent

In T 1213/97 the patent had expired for all designated contracting states during the opposition appeal proceedings. The appellant (opponent) requested a decision on the state of the file which implied a request for the continuation of the appeal proceedings for the purpose of issuing a decision. The board exercised its power under R. 60(1) EPC 1973 to continue the appeal proceedings.

In T 598/98 too the patent had lapsed for all designated contracting states since a time subsequent to the opponent's filing of the appeal, and the appellant (opponent) had requested continuation of the proceedings. The request was allowed. The board maintained that the opponent's legitimate interest in retroactive revocation was one of the elements that could be a factor in the board's decision to terminate or continue the proceedings under R. 60 EPC 1973. It also stated that the general interest in a central ruling on the patentability of an invention claimed in a patent did at any rate justify continuing the proceedings until a final decision was taken if the case was essentially ready for decision at the time when the patent lapsed and if it also made a significant difference to the patent's fate whether a decision was taken on the merits or the proceedings were simply terminated.

In T 500/12 the board granted the request filed by the appellant (opponent) for continuation of the appeal proceedings. The appellant had provided evidence from several national patent registers showing that the opposed patent had not lapsed in all contracting states and was still in force. The appellant further submitted that the annuity fees could be paid not only by the patentees but also by a third party. Furthermore, annuity fees could still be validly paid with a surcharge in many of the contracting states and, even if they were not paid with a surcharge in due time, reinstatement periods also had to be considered.

In T 740/15 the board interpreted R. 84(1) EPC to mean that if the opponent files a request for continuation of the opposition proceedings within the given time limit, the scope of discretion of the opposition division provided in R. 84(1) EPC is thereby limited to only one possible lawful decision and this is the continuation of the opposition proceedings. The board noted that this understanding found support in the travaux préparatoires of the EPC 1973.

In T 2492/18 the board set aside the opposition division's decision not to continue the opposition proceedings in accordance with R. 84(1) EPC. The reason given by the opposition division was that no timely request for continuation had been filed. The board noted that the request for continuation had been filed when an appeal was pending and that it would have been within the competence of the board in question to decide upon it. However the appeal had been withdrawn after two months and thus before the board was able to deal with it. From that moment on, the competence to deal with the request was again with the opposition division. The course of events might have led to some confusion, but that did not take away from the fact that a request for continuation had been timely filed and the opposition division had had an obligation to consider it.

In T 1959/15 the board, exercising its discretion under R. 84(1) EPC, decided to continue the appeal proceedings. In doing so, it had regard to the appellant's legitimate interest in attempting to reverse the opposition division's rejection of the opposition and to the circumstance that the board's decision on the patent had an ex tunc effect under Art. 68 EPC.