Introduction
In the recent decision J0004/24, the Legal Board of Appeal (LBA) of the European Patent Office (EPO) explored the conditions for interruption of proceedings under Rule 142(1)(b) EPC. While interruption of proceedings is a relatively infrequent occurrence in patent prosecution, the decision highlights important nuances concerning an applicant's legal capacity and the necessity of a genuine legal impediment. This blog post will focus on interruption of proceedings, explaining how and why the Legal Board of Appeal reached its conclusion.
Below, we will first summarize the invention under scrutiny. Then, we will delve into the main arguments put forward by the patentee (applicant) and how the Board addressed them. Finally, we will offer key lessons that prospective applicants can glean from this decision.
The Invention
The European patent application EP 17 867 378.6 concerns 3D printable hard ferrous metallic alloys suitable for powder bed fusion processes. The alloys reportedly provide improved hardness and wear resistance, rendering them particularly attractive for additive manufacturing in industrial applications such as automotive or tooling.
Key Technical Features:
A specific chemical composition (e.g., carbon, chromium, molybdenum) allowing for solidification with desirable microstructures.
- Enhanced mechanical properties (wear resistance, tensile strength) post-build and post-heat treatment.
- Suitability for use with common powder bed fusion systems (e.g., laser-based processes).
- Although the legal question in J 0004/24 does not directly relate to the inventive merits of these alloys, it is important to understand the general scope of the application. The patentee’s difficulties in continuing prosecution arose from financial and corporate events, not from any technical deficiency of the invention itself.
The Decision of the Board of Appeal: Interruption of Proceedings
Background
The applicant in the relevant timeframe was Nanosteel Company Inc. (“Nanosteel”). Following a series of financial setbacks and asset-related actions, Nanosteel requested interruption of proceedings under Rule 142(1)(b) EPC, arguing that it had lost the legal capacity to act due to an Article 9 UCC (Uniform Commercial Code) foreclosure in the United States.
Under Rule 142(1)(b) EPC, proceedings must be interrupted if an applicant “as a result of some action taken against his property by a third party… is prevented by legal reasons from continuing the proceedings.” The patentee contended that such a situation arose because its creditor took control of the company’s assets, making it impossible for Nanosteel to manage the patent application.
Arguments by the Patentee
Loss of Control: Nanosteel alleged that under Article 9 UCC, the creditor had effectively stepped in, liquidating or overseeing Nanosteel’s assets. This situation, in Nanosteel’s view, mirrored bankruptcy or insolvency procedures, thus blocking it legally from prosecuting the patent application.
Parallel Bankruptcies: Nanosteel further noted that an exclusive licensee, Formetrix, had also entered bankruptcy. Formetrix’s inability to continue the prosecution (in its view) exacerbated the fact that Nanosteel itself was under an analogous procedure to insolvency.
Timeline: Nanosteel argued the relevant period started at least by December 2020, extending into early 2021, during which it claims to have been legally incapacitated from responding to EPO communications within given deadlines.
Board’s Assessment and Outcome
The Legal Board of Appeal agreed with the Legal Division that no interruption of proceedings had occurred for the following main reasons:
Continued Actions by Nanosteel: Evidence showed Nanosteel had, in fact, continued to act before the EPO during the alleged period of legal incapacity (filing letters, requesting further processing).
No Legal Impediment: Under the Board’s reading, an Article 9 UCC foreclosure did not automatically equate to a formal bankruptcy or any mandatory legal measure preventing Nanosteel from maintaining its business operations or managing its assets (including the patent).
Rule 142(1)(b) EPC Not Triggered: Since Nanosteel was not proven to be legally barred from acting, the core requirement for interruption was unmet.
Thus, the LBA dismissed the appeal and upheld the Legal Division’s conclusion that the proceedings should not be interrupted.
Lessons to Be Learned
Confirm Legal Capacity Before Relying on Interruption
One key takeaway is that an applicant’s argument for interruption must be tightly connected to a genuine and enforceable legal bar to continuing proceedings. If the applicant, despite financial distress or external actions, can still file responses, pay fees, or instruct representatives, the EPO is unlikely to grant interruption.
Financial Distress vs. Insolvency
Financial or corporate distress alone does not suffice. Rule 142(1)(b) EPC often requires a formal insolvency or a recognized legal procedure rendering the applicant incapable of acting. Thus, “Article 9 UCC foreclosure” or other security enforcement might not qualify unless it truly suspends the applicant’s legal capacity.
Timely Communication with the EPO
The Board noted that Nanosteel corresponded with the EPO, requesting further processing and amendments. Hence, an applicant that manages to submit instructions on the patent application effectively demonstrates the continued ability to act.
Legal Basis
Rule 142(1)(b) EPC: Governing interruption of proceedings if an applicant is prevented “by legal reasons” from continuing.
Articles 60(3) and 114(2) EPC: Relevant to verifying the applicant’s right to a European patent and how the EPO evaluates late-filed evidence.
Case Law: J 9/90, J 11/95, J 26/95, J 11/98, J 16/05 – emphasizing that mere financial distress or partial foreclosure does not necessarily deprive a company of legal capacity to prosecute its application.
Contact
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.