Amendment of the EPC Rule on interruption of proceedings puts an end to zombie applications


C. Mulder (NL)

C. Mulder (NL)

J. Van kan (NL)

J. Van kan (NL)


Interruption of proceedings (Rule 142 EPC) provides a safeguard for an applicant for (or proprietor of) a European patent, who is temporarily unable to act in proceedings before the European Patent Office as a result of financial or medical hardship. Interruption allows the party to remedy any loss of rights which occurred during this period. Interruption of proceedings is declared ex officio by the EPO and, normally, retroactively from the first day of the legal incapacity. Recently, Rule 142 EPC has been amended to give the EPO also ex officio power to end the proceedings. The amended Rule as well as its advantages and disadvantages are discussed.

1 Introduction

Rule 142 of the European Patent Convention (EPC) deals with the situation that proceedings before the European Patent Office (EPO) are interrupted because the applicant for (or proprietor of) a European patent is prevented from continuing proceedings as a result of medical or financial hardship. In addition, Rule 142 EPC provides for interruption of proceedings in case of the death of the applicant (or proprietor) as well as in the event of death or legal incapacity of the professional representative of the applicant (or proprietor).

The aim of Rule 142 EPC is to provide a safeguard for parties who are unable to act in proceedings, because they are temporarily legally incapacitated (due to e.g. insolvency, bankruptcy or mental health problems), and allows them to remedy any loss of rights which occurred during this period.Travaux Préparatoires EPC 1973: Rule 90 EPC 1973. See (accessed 01.06.2020): https://www.epo.org/law-practice/legal-texts/epc/archive/epc-1973/traveaux.html.Travaux Préparatoires EPC 1973: Document BR 060 e 70; point 61. See (accessed 01.06.2020): https://www.epo.org/law-practice/legal-texts/epc/archive/epc-1973/traveaux/documents.html. The proceedings are resumed after the (new) party or the (new) professional representative involved has informed the EPO that the situation is normalised and the wish is indicated to continue the proceedings.

Rule 142 EPC regards the missing of time periods as if t had not occurred in a similar manner as further processingArt. 121 and Rule 135 EPC. and re-establishment of rightsArt. 122 and Rule 136 EPC.. There are also analogies between interruption of proceedings and stay of proceedings.Rule 14(2) EPC. In the latter case, proceedings before a national court have been initiated by a person who is of the opinion that he is entitled to the grant of the European patent.Art. 61 EPC. Interruption of proceedings is not available for the opponent or his representative.Rule 84(2), first sentence, EPC.

In principle, interruption of proceedings is applied ex officio by the legal division of the EPO and retroactively from the first day of the incapacity. In cases pending before a board of appeal, the board is responsible to deal with a request for interruption.See decisions T 854/12 and T 1389/18 of the Technical Boards of Appeal. In T 54/17, the board decided that during appeal proceedings, the legal division has no exclusive jurisdiction to interrupt the proceedings. In addition, the professional representative of the applicant (or proprietor) can apply for interruption of proceedings if he informs the EPO about the situation of his client.See the last sentence of Rule 142(1)(a) EPC: "To the extent that the above events do not affect the authorisation of a representative appointed under Article 134, proceedings shall be interrupted only on application by such representative". Also see Rule 152(9) EPC. The entry of interruption of proceedings in the European Patent Registry has a declarative effect.Also see decision J 16/05 of the judicial board of appeal.

Procedural aspects of interruption of proceedings are dealt with in the Guidelines for Examination in the EPO.Guidelines for Examination in the EPO (2019) E-VII 1. See (accessed 01.06.2020): https://www.epo.org/law-practice/legal-texts/guidelines.html. In addition, the Case Law book gives a summary of the case law of the EPO Boards of Appeal in relation to interruption of proceedings.Case Law of the Boards of Appeal of the European Patent Office (9th edition; 2019) III.D.3. See (accessed 01.06.2020): https://www.epo.org/law-practice/case-law-appeals/case-law.html. The situation with respect to insolvency causing interruption of proceedings is extensively discussed in an article by Neuburger in epi Information.Dr. B. Neuburger, "Interruption of the proceedings due to insolvency before the EPO and UPC" in epi Information 4|2017.

In 2019, an article was published by the current authors discussing the problems with Rule 142 EPC.Cees Mulder and Joep Van kan, "On the Interruption of Proceedings before the European Patent Office Following Insolvency Proceedings and Protecting the Interests of the Public" in European IP Review 41 (2019) pp.305-312. One of the problems is that the EPO can only resume proceedings when the (new) applicant (or proprietor) or his (new) professional representative informs the EPO that the reasons for the interruption have ceased to exist and the wish is indicated to continue the proceedings. If the EPO does not receive such information, the proceedings can never be resumed. The second problem is that proceedings are often declared interrupted retroactively by the EPO even after four, five, six or sometimes even more than six years after the loss of rights has occurred. Such a long retroactive effect is against the legitimate interests of the public. Yet another problem of Rule 142 EPC is that there is no provision for the right of continued use for a person who in good faith used or made effective use of the invention while the application or patent appears to be dead and the proceedings have not been declared interrupted.

Probably inspired by the article of the current authors,In October 2018, a draft version of the article was made available to the Patent Law section of the EPO. the EPO started considering proposals for amending Rule 142 EPC, in particular with the goal to give the EPO ex officio power to bring the proceedings to an end if, after a certain period of time, no reaction from the applicant (or proprietor) is received.President EPO: “Amendment to the Implementing Regulations to the EPC regarding resumption of proceedings ‒ Rule 142 EPC”, Committee on Patent Law, document CA/PL 13/19 (4 November 2019). Amended Rule 142 EPC entered into force on 1 July 2020.Decision CA/D 2/20 of the Administrative Council of the European Patent Organisation, Official Journal of the EPO 2020 A36. The EPO has published a Notice concerning the implementation of amended Rule 142(2) EPCNotice from the EPO dated 29 May 2020 concerning implementation of amended Rule 142(2) EPC, Official Journal of the EPO 2020 A76..

In this article, the old and the new Rule are discussed. In Chapter 2 a brief historic overview of Rule 142 EPC is given. Chapter 3 discusses the relevant ins and outs of current Rule 142 EPC. In Chapter 4, the advantages and disadvantages of the amended Rule, as well as the unresolved problems are discussed.

2 Origin of Rule 142 EPC 

The Rule in the EPC 1973 relating to interruption of proceedings was Rule 90 EPC 1973. The latter Rule was present from the beginning and has since then been amended once.Travaux Préparatoires of the EPC 1973: Rule 90 EPC 1973. See (accessed 01.06.2020): https://www.epo.org/law-practice/legal-texts/epc/archive/epc-1973/traveaux.html.Decision of the Administrative Council of the European Patent Organisation of 5 June 1987 amending Rule 90(1)(c) EPC 1973 (added text italicised):"(c) in the event of the death or legal incapacity of the representative of an applicant for or proprietor of a European patent or of his being prevented for legal reasons resulting from action taken against his property from continuing the proceedings before the European Patent Office." Official Journal of the EPO (1987) p. 279. 
The Travaux Préparatoires of the EPC 1973 do not contain any information regarding the origin of Rule 90 EPC 1973.In the Münchner Gemeinschaftskommentar in relation to Art. 120 EPC (Issue 26, 2003, Carl Heymanns Verlag), Rule 90 EPC 1973 was placed in historic perspective. According to the author B. Schachenmann, Rule 90 EPC 1973 (now Rule 142 EPC 2000) implements Art. 125 EPC (‘Reference to general principles’), rather than Art. 120 EPC (‘Time limits’). This was the reason why Rule 142 EPC was allocated to a separate chapter (VIII) in Part VII of the Implementing Regulations to the EPC. In addition, there is no equivalent Rule regarding interruption of proceedings in the German Patent Act (PatG), which might have served as a blueprint for the Rule in the EPC. It seems likely that the German provisions regarding interruption of proceedings and the application thereof with regard to the German patent practice have served as a model for drafting Rule 90 EPC 1973. In particular, this can be concluded from the practice at the German Patent and Trade Mark Office and at the German Federal Patent Court, as both apply in analogy the pertinent provisions of the German Code of Civil Procedure with regard to interruption of proceedings.See sections 239 to 249 of the Zivilprozessordnung (= German Code of Civil Procedure) which are applicable to proceedings before the Deutsches Patent- und Markenamt (= German Patent and Trade Mark Office) and to the Bundespatentgericht (= BPatG) by way of reference in the applicable administrative procedural law: see section 173 of the Verwaltungsgerichtsordnung (= German Code of Administrative Court Procedure).

2.2 EPC 2000

After the EPC Revision Conference in November 2000, the wording of Rule 90 EPC 1973 was streamlined and aligned with the style of the EPC 2000.Explanatory remarks 2002: CA/PL 5/02 Rev. 1 Add. 1. The Travaux Préparatoires of the EPC Revision 2000 can be found on the EPO website. See (accessed 01.06.2020): https://www.epo.org/law-practice/legal-texts/epc/archive/documentation.html.Special Edition No. 5 Revision of the European Patent Convention (EPC 2000) Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulation, Official Journal of the EPO (2007).

3 Common practice under Rule 142 EPC 

3.1 Some statistics

The EPO weekly publishes a European Patent Bulletin containing the particulars the publication of which is prescribed by the European Patent Convention (EPC), the Implementing Regulations or by the President of the EPO.See Art. 129(a) EPC. The Bulletin has an online search tool (free of charge) for accessing information on the bibliographic and procedural status of European applications and patents from 1978 to the present.See (accessed 01.06.2020): https://www.epo.org/searching-for-patents/legal/bulletin/ep-bulletin-search.html#tab1. For instance, a query can be set that cumulates the European patent applications and patents where interruption or stay of proceedings is contained in the file.The search criterion "PSSI" in EP Bulletin search retrieves patent applications and patents where stay of proceedings (Rule 14 EPC) or interruption of proceedings (Rule 142 EPC) occurred. For example, the query PSSI = 2018* retrieves all applications/patents where a stay or interruption of proceedings occurred in 2018.The EP Bulletin search was used to retrieve the examples in this article. The database is continuously updated, therefore Figure 1 mentions the date on which the results have been retrieved.

In Figure 1, the statistics of interruption and stay of proceedings are depicted. In the period 2009-19, the average number per year is approximately 390 (standard deviation ≈130). The majority of the cases in Figure 1 relates to interruption of proceedings. The peaks in the figure are caused by one or several applicants with a portfolio of patent rights going bankrupt in a certain year.For instance in 2012, there is one applicant who went bankrupt and the proceedings were declared interrupted for 343 patent applications: this explains the outlier in 2012 in Figure 1. In approximately 90% of the interruption cases, the proceedings are eventually resumed. However, in approximately 10% of the cases where interruption of the proceedings has been declared by the EPO, the proceedings are never resumed.In the period 2009-2019, proceedings were declared interrupted in respect of 4,301 applications whereas proceedings were resumed in respect of 3,720 applications. This implies that 581 applications (14%) have not (yet) been resumed.

Number of European patent applications and patents where the proceedings were declared interrupted by the European Patent Office

Figure 1 - Number of European patent applications and patents where the proceedings were declared interrupted by the European Patent Office (data retrieved by Cees Mulder on 01.06.2020).


3.2 Typical interruption cases

The most common cases of interruption of proceedings are the ones where an applicant (or proprietor) runs into severe financial difficulties, often as a result of an action against his property.Almost 90% of the interruption cases relate to bankruptcy or similar judicial proceedings regarding the applicant or patent proprietor. In such a situation (e.g. bankruptcy or insolvency) the applicant is barred for a period of time from continuing with the proceedings (legally incapacitated).

By way of example, European patent application EP 3 535 150 was selected which originated from international application WO 2016/142653 A1. The most relevant events are arranged in Table 1. In this example, the EPO is informed about the insolvency after the 31 month period for entry into the regional phase before the EPO had been missed, but within the period that further processing would be available. After receiving the required proof (court order), the legal division of the EPO declares the proceedings interrupted retroactively. After the EPO has been informed about the end of the insolvency proceedings and about the person authorised and willing to continue the proceedings, the EPO sets a date for the resumption of the proceedings. During the period of interruption all time periods (including the ones for paying renewal fees) are interrupted and start again from the date of resumption.See Rule 142(4) EPC. On resumption of the proceedings most periods begin again to run for their original duration. Only the periods for filing the request for examination and for paying the renewal fees are suspended. Shortly before the proceedings are resumed, the applicant of EP 3 535 150 requests entry into the EP regional phase and also pays the required fees for entry as well as requests further processing. After the request for further processing has been accepted by the EPO, the substantive examination starts.

EP 3 535 150 Proceedings status
12.03.2015 Filing GB 1504232.8 Priority application
01.03.2016 Filing PCT/GB2016/050535 International filing date
15.09.2016 WO 2016/142653 A1 International publication
19.07.2017 EPO Form 1201 Information from the EPO on entry into EP regional phase
(12.10.2017) Last date for valid entry in EP regional phase This date was missed
17.11.2017 Communication from EPO pursuant Rule 112(1) and 160(1) EPC Euro-PCT application deemed to be withdrawn: acts for entry into EP phase not performed
21.11.2018 Communication from the legal division pursuant Rule 142(1)(b) EPC Proceedings are declared interrupted as of 12 December 2017
12.12.2017 Interruption of proceedings Interruption is declared retroactively
07.03.2019 Communication from the legal division pursuant Rule 142(2) EPC Proceedings will be resumed on 3 June 2019
16.05.2019 EPO Form 1200 Request for entry in EP regional phase (including payment of the required fees
Request for further processing Request to remedy loss of rights following interruption of proceedings (including payment of the required fees
Response to written opinion: EPO acted as ISA (Rule 161(1) EPC) Filing of amended claims and amended description, with annotations
03.06.2019 Resumption of proceedings
19.07.2019 Decision on further processing The legal consequence notified in the communication dated 17.11.2017 that the application was deemed to be withdrawn shall not ensue

Table 1 - Example of a European patent application where proceedings were interrupted because of insolvency proceedings. 


In a number of cases, proceedings are interrupted but never resumed.See footnote 29. By way of example, European patent application EP 2 351 885 was selected. The most relevant events are arranged chronologically in Table 2. In this case, the proceedings were interrupted in 2015 and never resumed. In 2015, the EPO issued the following communication:EP 2 351 885: Communication from the legal division - original letter was in German.

"You are invited to inform the legal division of the EPO if an interested party could be found to continue proceedings in this application, and to file the relevant documents proving the authorisation of this party, in order to enable the EPO to resume proceedings. The legal division would also appreciate information if no interested party could be found to continue the proceedings. Please file observations within a period of 2 months on notification of this letter."

Until today no response was received by the EPO. As a consequence, the patent application will be ‘pending’ before the EPO (without paying any fees) until February 2030.The term of a European patent is 20 years from the date of filing of the application (Art. 63(1) EPC). The existence of these so called “no end files” or zombie applications is undesirable.

EP 2 351 885 Proceedings status
09.02.2010 Form 1001 Request for grant of EP patent
14.04.2011 European search report with search opinion
03.08.2011 A1 publication
Response to search (Rule 161(1) EPC) Filing of amended claims and amended description, with annotations
17.11.2017 Communication from EPO pursuant Rule 112(1) and 160(1) EPC Euro-PCT application deemed to be withdrawn: acts for entry into EP phase not performed
06.01.2012 Payment examination and designation fee
07.04.2015 Communication from EPO pursuant Rule 51(2) EPC Non-payment of the renewal fee
21.04.2015 Communicatio from the legal division pursuant Rule 142(1)(b) EPC Proceedings are declared interrupted as of 01 April 2015
01.04.2015 Interruption of proceedings Interruption is declared retroactively
28.05.2015 Communication from the legal division pursuant Rule 142(2) EPC Request to inform the EPO whether proceedings can be resumed

Table 2 - Example of a European patent application where proceedings were interrupted because of bankruptcy of the applicant.


3.3 Interruption of proceedings versus re-establishment of rights

Another remedy which often can be successfully employed by an applicant is re-establishment of rights.Re-establishment of rights is often also referred to as restitutio in integrum. Re-establishment allows an applicant (or proprietor) to restore his rights after the non-observance of a time period.See Art. 122 and Rule 136 EPC. Re-establishment of rights is not available for the opponent. Re-establishment of rights requires the requester to have exercised all due care required by the circumstances. The request for re-establishment must be filed within two months from the removal of the cause of non-compliance, but at the latest within one year of expiry of the unobserved time period.See Rule 136(1) EPC. The one-year restriction renders re-establishment of rights ineffective if the applicant is prevented to inform the EPO in due time about his situation (because he is legally incapacitated).

Re-establishment of rights and interruption of proceedings should not be understood as alternative remedies in case of a loss of rights. In principle, interruption excludes re-establishment, since interruption has to be ordered ex officio and no action can be taken during interrupted proceedings. Nevertheless, re-establishment of rights may be requested as an auxiliary request if the evidence for interruption is not sufficient.For example, see EP 1 578 265, EP 1 945 542 and EP 1 996 074. If applicable, preference should be given to the application of re establishment of rights in which proving the impairment is less severe than for interruption of proceedings.See decision J 7/16 of the judicial board of appeal.Case Law of the Boards of Appeal of the European Patent Office (9th edition; 2019) III.E.6.4.

4 Old Rule 142 EPC and its problems

Three problems of interruption of proceedings under old Rule 142 EPC require discussion.In the rest of the article where the word 'applicant' is used, one should read 'applicant or proprietor'.

  1. The first problem with Rule 142 EPC is that the EPO can only resume proceedings when the (new) applicant or his (new) professional representative informs the EPO that the reasons for the interruption have ceased to exist and the wish is indicated to continue the proceedings. If this does not happen, the proceedings can never be resumed.
  2. A second problem with Rule 142 EPC is that proceedings are often declared interrupted retroactively by the EPO even after three or more years (sometimes even more than six years) after the loss of rights has occurred. Such a long retroactive effect is against the legitimate interests of the public.
  3. A third problem with Rule 142 EPC is that it has no provision for the right of continued use for a person who in good faith used the invention while the application or patent appears to be dead and the proceedings have not (yet) been declared interrupted.

As will be shown below, the first problem is solved by the amendment of Rule 142 EPC effective 1 July 2020.

4.1 Ex officio resumption of proceedings by the EPO

It is in the interest of legal certainty of the public that the period wherein proceedings are interrupted is as short as possible. For resumption of the proceedings, the EPO, under the old Rule, is totally dependent on the applicant or his (new) professional representative. The only possibility for the EPO to resume proceedings is when applicant informs the EPO that the reasons for the interruption have ceased to exist and that he expressly indicate the wish to continue with the patent application. Old Rule 142 EPC does not give the EPO any power to resume proceedings of its own motion.Only in the event of the death or legal incapacity of the representative of the applicant (Rule 142(1)(c) EPC), the EPO can resume proceedings if the appointment of a new representative takes too long (Rule 142(3) EPC).

The EPO has solved this problem by adding a second sentence to Rule 142(2) EPC (new text in red):Decision CA/D/2020 of the Administrative Council of the European Patent Organisation, Official Journal of the EPO 2020 A36. Amended Rule 142(2) EPC applies to all proceedings already interrupted on or after 1 July 2020.

When, in the cases referred to in paragraph 1(a) or (b), the European Patent Office has been informed of the identity of the person authorised to continue the proceedings, it shall notify such person and, where applicable, any third party, that the proceedings will be resumed as from a specified date. If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion.

Advantages of the amendment

The result of the extra sentence in Rule 142(2) EPC is that on expiry of the three-year period from the publication of the interruption date in the European Patent Bulletin, the EPO will be entitled to set a date of its own motion after which proceedings will be resumed. This is a breakthrough amendment bringing balance between the interests of the applicant and the public. A consequence of the ex officio resumption is that procedural actions may become necessary and/or fees due have to be paid (e.g. accrued renewal fees). If the required procedural actions are not taken or the fees due are not paid, the application will be deemed to be withdrawn or the patent will be either revoked or maintained (in amended form).See footnote 16. In any event, the Office will be able to end the pending patent proceedings. In addition, the EPO will be able to close a file in a legally and technically sound manner, even if it is not informed of the person entitled to the application or patent. Therefore, this amendment puts an end to the zombie applications.

Disadvantages of the amendment

Note that the word “may” is used in the added sentence in Rule 142(2) EPC. If the applicant files a reasoned request for further postponing the resumption, the EPO may delay the resumption of the proceedings. This appears to be reasonable, but may further delay the resumption of the proceedings. The application and the duration of this postponement should, preferably, be explained in the Guidelines.

Also note that the three-year period does not run from the date of the start of the interruption of proceedings (in most cases, proceedings are declared interrupted retroactively), but from the date the interruption of proceedings is mentioned in the European Patent Bulletin. This wording carries a risk, because the amendment may stimulate an applicant to wait as long as possible to inform the EPO that he was prevented from continuing the proceedings. The longer the applicant waits to inform the EPO, the later the legal division is able to publish the interruption of proceedings in the Patent Bulletin by which the three-year period starts to run. This undesired advantage for the applicant defies the aim of the amendment to allow the proceedings being concluded swiftly.

There is another issue which has not been considered upon amending Rule 142 EPC. As mentioned earlier (see, e.g., the example in Table 2), the legal division issues letters to the applicant (or his representative) requesting whether an interested party could be found to continue the proceedings which would enable the EPO to resume proceedings.Often the professional representative replies by renouncing representation of his client. However, even if a duly appointed professional representative of the applicant informs the EPO that his client has no intention to resume proceedings, the EPO had no power under the old Rule 142 EPC, but also not under amended Rule 142 EPC to resume proceedings, because under amended Rule 142 EPC, the EPO has to wait until the three-year period has expired.

By way of example, reference is made to EP 1 471 865. Proceedings were declared interrupted as of 28 April 2010 owing to bankruptcy proceedings opened against the applicant. On 8 March 2012, the professional representative informed the EPO: “Please be informed that the applicant does not intend to resume proceedings in the above-mentioned European patent application. For the sake of completeness a duly signed power of attorney is enclosed."

In another case (EP 1 483 732), proceedings were declared interrupted as of 5 January 2010 due to bankruptcy proceedings. On 5 June 2018, the appointed professional representative informed the EPO that the bankruptcy proceedings of his client ended in 2016. Two weeks later the legal division responded: “… please be informed that according to Rule 142(1)(b) proceedings are interrupted ex-officio. Therefore your request dated 05 June 2018 cannot be granted.”

In both cases, the letter from the professional representative did not result in closing the case because under the old Rule the EPO has no power to act. However, this is also the case under amended Rule 142 EPC. Under the amended Rule, the EPO has to wait three years from the publication of the date of interruption in the Patent Bulletin, to be able to bring the case to an end.

This kind of situations could easily have been avoided by adding the words “or otherwise” to the new sentence in Rule 142(2) EPC (added text in red):

If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings or otherwise, it may set a date on which it intends to resume the proceedings of its own motion.

This “or otherwise” wording could be used to shorten the three years, for instance, when the applicant (or his representative) informs the EPO that he has no desire to continue with the application. This practice could be explained in the Guidelines.

4.2 No limit to retroactive effect of interruption of proceedings

A second problem with Rule 142 EPC is that proceedings often are declared interrupted retroactively by the EPO even after three or more years (sometimes even more than six years) after the loss of rights has occurred. Such a long retroactive effect is against the legitimate interests of the public.

>In the earlier article written by the current authors,See footnote 14. also a figure with statistics was shown. For the current article, the collection of data on interruption was repeated and the results were compared with the previous figure. It was found that in the course of 2019, 118 new cases were declared interrupted retroactively in the years 2016-2018. However, 45 cases were declared interrupted retroactively in the years 2013-2015.Even one case was declared interrupted retroactively in 2010.. Such long retroactive effect is undesirable from a point of legal certainty.

Such extremely long retroactive effects could be avoided by including an extra paragraph in Rule 142 EPC:

Rule 142(1a) EPC: "Interruption of proceedings shall not affect a loss of rights which occurred more than three years before filing the request for interruption referred to in paragraph 1."

The authors believe that a period of three years would be sufficient.

Another solution to shorten the uncertainty of the public with respect to current Rule 142 EPC, would be to give the professional representative of the applicant an obligation to inform the EPO in the event of the death or legal incapacity of his client within a certain period of time. In this manner the proceedings could be declared interrupted much earlier than what is normally the case. This would significantly lower the uncertainty of the public: the public may at least know that the proceedings are interrupted. Such an obligation to the professional representative could be inserted in Rule 152 EPC. Current Rule 152(9) EPC deals with an authorisation of a representative that does not end upon the death of the person who gave it. An extra sentence could be added to Rule 152(9) or a new Rule 152(9a) EPC could inserted reading:

"In the situation of Rule 142(1)(a) and (b), the professional representative of the applicant or proprietor shall inform the European Patent Office within three months from the events mentioned in Rule 142(1)(a) and (b)."

Yet another solution to better protect the interests of the public can be found in the 1964 draft version of Rule 90 EPC 1973 which provided that the proceedings would "be interrupted until a legal representative has been appointed".Working document for Draft Implementing Regulations to the Convention establishing a European System for the Grant of Patents put forward by the Chairman of the "Implementing Regulations'' sub-Committee of Working Party I, Document BR/GT I/63/70 (Brussels 6 October 1970). This would certainly shorten the period during which the proceedings are interrupted. Although the appointed 'official receiver' is the legal owner of the patent rights while the applicant is legally incapacitated and as such could take control of the patent rights, he was not given a role in the final version of Rule 90 EPC 1973.A reason could be that the 'official receiver' is rescuing more 'vital' things whereas taking care of any patent rights (apart from how he would become aware of them) is not prominent on his to-do list.

4.3 No right of continued use

As discussed hereinabove, interruption of proceedings is often applied if the applicant is prevented from continuing the proceedings due to financial hardship. During the period that the applicant is legally incapacitated, he is normally unable to inform the EPO about his situation. Only when he is 'back in business', this can be communicated the EPO. After having received the required proof, the EPO will declare the proceedings interrupted retroactively. Hence, there is a period in the life of the patent application, that the European Patent Register shows that a loss of rights has occurred. For example, the application is deemed to be withdrawn because the renewal fees have not been paid. If this period is shorter than one year, re-establishment of rights can be requested by the applicant. If a third party has in good faith used or made effective and serious preparations for using an invention in the period between the loss of rights and the mention of re-establishment of those rights in the European Patent Bulletin, he may without payment continue such use in the course of his business or for the needs thereof.Art. 122(5) EPC. Such a right of continued use is not provided when the proceedings are declared interrupted under Rule 142 EPC.

In a situation of re-establishment of rights, the applicant actually missed to perform a required act (e.g. paying a fee or answering a communication from the EPO). This missing of the time period is the result of the applicant being unable to perform the required act in due time due to unforeseeable circumstances. If the applicant can prove that he acted diligently and carefully,The 'all due care' criterion in Art. 122(1) EPC. Also see decision J 952/00 of the judicial board of appeal. the missed right may be restored. Requesting re-establishment of rights does not have suspensive effect on the proceedings. Hence, the legal consequences remain in force until the request for re-establishment is honoured. In this situation, providing a right of continued use seems appropriate,Art. 122(5) EPC. because the application is actually dead for a certain period of time.

In the situation of interruption of proceedings, the patent application is not 'really dead' in the interrupted period. During the interruption, the applicant is unable to perform the required acts because he is legally incapacitated. Once the causes of the interruption are resolved, the patent application is revived retroactively as if the interruption had not occurred.This also becomes clear from the wording of Rule 142(4) EPC which states that all periods in force at the date of interruption, start again as from the day on which the proceedings are resumed. Exceptions are provided for the period for filing the request for examination and for paying the renewal fees: these periods are resumed taking into account the already elapsed portions (with a minimum of two months). In such a situation, it seems inappropriate to provide for a right of continued use despite the fact that in most cases the proceedings are declared interrupted retroactively.

The conclusion from this discussion is that it has to be accepted that rights of third party can be affected by the interruption. By inserting a period of maximum duration into Rule 142 EPC for the ex officio resumption by the EPO as in amended Rule 142 EPC mitigates this effect. However, it is recommended to also set a limit to the retroactive effect of declaring the proceedings interrupted.

5 Conclusion

Interruption of proceedings before the European Patent Office provides a safeguard for an applicant for or a proprietor of a European patent, who is temporarily unable to act in proceedings before the EPO as a result of financial or medical hardship.

Interruption of proceedings is declared ex officio by the EPO and, normally, retroactively from the first day of the legal incapacity.

In the event of death of the applicant or proprietor (Rule 142(1)(a) EPC) and in the event of an action against the property of the applicant or proprietor (Rule 142(1)(b) EPC), the EPO has no power to resume proceedings until it is informed by the (new) applicant (or proprietor) or the (new) professional representative that he/she desires to resume proceedings.

In view of the recent amendment of Rule 142 EPC, ex officio power is also given to the EPO to resume proceedings three years after the publication of the interruption date in the European Patent Bulletin. This amendment restores balance between the interests of the applicant (or proprietor) and the public. The advantages, disadvantages and the risks of the amendment are discussed.

In the amended Rule, it could have been easy to provide possibilities to terminate the interrupted case, e.g. when the professional representative of the applicant informs the EPO that his client is no longer interested in continuing with the application.

Unfortunately, setting a limit on the retroactive effect of the interruption as suggested in the article of the current authors, was not implemented.Cees Mulder and Joep Van kan, "On the Interruption of Proceedings before the European Patent Office Following Insolvency Proceedings and Protecting the Interests of the Public" in European IP Review 41 (2019) pp.305-312. Limiting the retroactive effect to three years would have been reasonable.

With little effort, the quality and effectiveness of Rule 142 EPC could have been further improved. This would have provided a better balance between the interests of the applicant and the public. The current authors believe that they could have given good advice to the parties involved in the process of amending Rule 142 EPC.



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