District court applies two-decade-old EPO decision

Nearly two decades have passed since the European Patent Office (EPO) Enlarged Board of Appeal handed down Decision G3/92, dealing with a European patent application made by an unlawful applicant. The decision was recently applied by a Swedish district court, which declared the plaintiff to be entitled to an invention covered by a Patent Cooperation Treaty application that had irrevocably lapsed several years earlier. This article aims to shed some light on the board's decision and its ongoing impact.

Decision G3/92
The EPO Enlarged Board of Appeal was asked to consider a situation where a company (the appellant) had developed a device and had confidentially disclosed it to a third party, which then unlawfully filed a European patent application for the invention. This application was later deemed to be withdrawn because no request for examination was filed in due time. The appellant first became aware of the application when it filed a European patent application for the same invention a few years later. Following a national decision which established the appellant’s right to the grant of the European patent for the invention, the case made its way to the Legal Board of Appeal, which decided to refer a question to the Enlarged Board of Appeal for guidance on whether it was a precondition for the application to be accepted under Article 61 of the European Patent Convention that the original usurping application was still pending before the EPO when the new application was filed.

The key issue concerned the interpretation of Article 61(1) of the convention governing the procedural rights of a person who, by a final decision, has been adjudged to be entitled to the grant of a European patent, compared to the actual European patent applicant. Under these circumstances, Article 61(1)(b) provides that the entitled person may file a new European patent application in respect of the same invention under the Implementing Regulations. On June 13 1994 the Enlarged Board of Appeal handed down its decision clarifying that it is not a precondition for the application to be accepted under Article 61 that the original usurping application was still pending before the EPO when the new application was filed.

Stockholm District Court decision
In the case before the Stockholm District Court (Case T 17713-08) two former employees of a medical technology company (Company A) had been recruited by a competing company (Company B). Shortly after the recruitment, Company B filed a Patent Cooperation Treaty application for an invention made by the two employees. Following publication of the application (which was then pending before the EPO), Company A brought an action against Company B asking for a declaratory judgment establishing Company A to be the rightful owner of the invention. Company A refrained from requesting the EPO to stay its processing of the Patent Cooperation Treaty application awaiting the final outcome of the Swedish entitlement dispute and, at an early stage of the lengthy court proceedings, the Patent Cooperation Treaty application lapsed irrevocably due to non-payment of fees.

Among other claims, Company B argued that the invention, which had been disclosed on publication of the lapsed Patent Cooperation Treaty application, was no longer patentable and could no longer be subject to any entitlement claims. In this connection, Company B stressed that Company A had intentionally refrained from requesting the EPO to stay the processing of the patent application.

Applying Decision G3/92, the district court took a different view and held that it could be assumed that Company A would be entitled to file a new patent application with the EPO for the same invention even though the new patent application would be filed several years after the Patent Cooperation Treaty application had lapsed. The court ruled in favour of Company A and, following an appeal which was subsequently withdrawn, the case was closed in late 2013.

Comment
The Stockholm District Court decision serves as a reminder of the interesting aspects of Decision G3/92. Although the Implementing Rules allow a party to request a stay of the EPO’s processing of a patent application, the Enlarged Board of Appeal decision clarified that there was no obligation to make such request. Consequently, if a lawful applicant chooses not to request a stay and the earlier application lapses irrevocably, most third parties will certainly, however incorrectly, assume that the invention disclosed in the lapsed patent application is – and will remain – in the public domain. For such third parties, a new patent application for the same invention filed years later by the lawful applicant will come as an unpleasant surprise.  

Although the Enlarged Board of Appeal decision may involve uncertain outcomes in respect of possible infringement issues in relation to third parties commencing commercial activities involving the invention on the assumption that the earlier patent application is in the public domain, the decision serves as an important safeguard for rights holders.