T 0146/82 (Suspension of proceedings) of 29.5.1985

Summary of Facts and Submissions

I. European patent application No. 79 300 047.2, filed on 11 January 1979 and published under No. 0 003 178 on 25 July 1979, was refused by a decision of the Examining Division dated 20 April 1982.

II. A notice of appeal was duly filed on 18 June 1982 and the appeal fee was duly paid. A Statement of Grounds of the appeal was duly filed on 16 August 1982.

III. A Communication of the Technical Board of Appeal pursuant to Article 110(2) EPC, dated 20 November 1984, was sent to the Appellant by registered post. The Appellant was thereby invited to file observations within a period of two months. By letter dated 13 December 1984, received on 17 December 1984, the Appellant requested an extension of two months to this period on the ground that an action was pending under Section 12 of the United Kingdom Patents Act 1977 concerning entitlement to the European patent application and that oral proceedings in that action had been postponed pending negociations between the parties. The requested extension was granted by the Registry of the Boards of Appeal. By duly confirmed telex on 15 March 1985, the Appellant requested a further extension of two months. On 20 March 1985, by telex, the Board granted the further extension, indicating that in the interest of third parties no indefinite postponement of the procedure was possible and that this extension should be regarded as final.

IV. By duly confirmed telex on 17 May 1985, the Third Party requested a stay of the proceedings for grant of the European patent under Rule 13(1) EPC on the ground that proceedings under Section 12 United Kingdom Patents Act 1977 had been commenced before the United Kingdom Patent Office, by the Third Party, on 5 April 1982. It was alleged that the parties were attempting to resolve their dispute by discussion between themselves. Documents proving the existence of the United Kingdom proceedings were filed on 22 May 1985.

Reasons for the Decision

1. The application for a stay of the proceedings for grant of the European patent complies with the requirements of Rule 13(1) EPC and was made before the expiry of the final extension of time granted to the applicant. Since the original period for reply to the communication dated 20 November 1984 was set in a document sent by registered post, by virtue of the provisions of Rule 78(3) EPC the original period must be considered to have run for two months and ten days, with the result that all subsequent extensions of the period for reply have run until the thirtieth day of the month in question.

2. Since the application for a stay of the proceedings for the grant complies with the requirements of Rule 13(1) EPC, the Third Party having provided satisfactory proof of the opening of relevant proceedings against the applicant before the United Kingdom Patent Office, the application must be granted.

3. However, having regard to the considerable length of time for which the proceedings before the United Kingdom Patent Office have been pending and having regard to the periods for which the applicant’s time for replying to the Board’s communication has already been extended, the Board is disposed to set a date on which it intends to continue the proceedings for the grant of the European patent, regardless of the stage reached in the proceedings before the United Kingdom Patent Office, pursuant to the provisions of Rule 13(3) EPC. That date will be 1 December 1985 unless the Board otherwise orders on subsequent application by either party.

ORDER

For these reasons, it is decided that:

1. All proceedings for the grant of a European patent on European patent application number 79 300 047.3 are suspended until 1 December 1985 or until further order by the Board.

2. The applicant and the Third Party are each to be at liberty to apply to the Board for the discharge or variation of this order.