Legitimate interest in continuing the examination or opposition proceedings at the EPO after the expiry of the 20-year patent term
In practice, it takes about 3 to 5 years for a European patent application to be granted, which may be followed by opposition proceedings, which in turn may take 3 to 6 years until final resolution, but in total well before the expiry of the 20-year patent term, calculated from the filing date of the application according to Art. 63(1) EPC.
However, if the grant of the patent is delayed, e.g. in the case of late filed divisional applications, it may well be that the application is still in examination proceedings or the granted patent is still in opposition proceedings when the 20-year patent term expires, and the question arises why these proceedings should be continued for final resolution. In other words, is there a legitimate interest in continuing the grant or opposition proceedings? In two recent decisions, the EPO has shed light on this question.
In decision T 0910/18 of May 31, 2022, which relates to examination proceedings, the board confirmed the earlier decision T 0036/19, which outlined that the applicant has an inherent interest in continuing the prosecution because a European patent application confers rights already after its publication under Article 67 EPC, which may include appropriate damages from the infringer if the claimed subject-matter is patentable.
In further decision T 0582/19 of May 19, 2022, which relates to opposition proceedings where the opposed patent had lapsed in all validation states, the board held that the opponent still had an inherent legitimate interest in continuing the opposition proceedings upon his request under Rule 84(1) EPC, since said lapse of the patent is effective only from the time of lapse (“ex nunc”) and still covers potential damages up to that time, but the revocation is effective from the beginning (“ex tunc”), which in turn means that no damages could arise.