T 0357/89 (Withdrawal of appeal) 19-08-1991

Reasons for the Decision

1. Under Article 112(1) EPC, in order to ensure uniform application of the law or if an important point of law arises, a Board of Appeal must refer a question to the Enlarged Board of Appeal if it considers the latter's decision to be required. Board 3.3.1 considers that a decision of the Enlarged Board of Appeal is required as to whether it may continue appeal proceedings on a case pending before it even though the sole opponents have withdrawn their appeal. Continuation of the appeal proceedings would seem to be desirable in view of the earlier European patent application No. 68 024 cited by the opponents, which must be taken into account under Article 54(3) EPC and which the Board considers to be relevant to the patent proprietors' European patent. This also seems to be the patent proprietors' view, since they filed new claims, the text of which this Board cannot accept without further amendments being made.

In the public interest (cf. G 1/84, OJ EPO 1985, 299, point 3 of the Reasons for the Decision) it is desirable for the Board to be able to continue the appeal proceedings in order either to maintain the contested patent in only a limited form or - if necessary - to revoke it.

2. It cannot be clearly inferred from the European Patent Convention that appeal proceedings may be continued even if the sole opponent to file an appeal has withdrawn it. Neither the Convention itself nor its Implementing Regulations contain any provision entitling a Board to continue appeal proceedings even though the only appeal filed has been withdrawn.

3. Consequently, the possibility of continuing appeal proceedings after the opponent has withdrawn his appeal has hitherto not been considered in the case law of EPO Boards of Appeal. Board 3.4.1 stated in its decision T 85/84 dated 14 January 1986 that, as a result of the withdrawal of the opponent's appeal, the Opposition Division's decision became final and a decision could only be taken on the apportionment of costs.

Board 3.3.2 took the same view in its decision T 323/89 dated 24 September 1990 (cited in 1990 Case law report, Supplement to OJ EPO 6/1991, 47). In this case the Board treated a statement made by the appellant (opponent) as a withdrawal of the appeal, "so that the grounds for opposing the maintenance of the European patent are no longer to be considered".

In its decision T 428/88 dated 29 November 1989 (EPOR 1990, 385), Board 3.3.2 stated that even in inter partes proceedings account should be taken of the public interest; even if the appellant (opponent) did not object any more to the maintenance of the patent as amended, the Board of Appeal had to examine of its own motion the new version of the patent. In this case however, the appellant (opponent) had not withdrawn his appeal but had merely stated that he had no objection to the new version of the claims.

4. Rule 60(2) EPC is the only exception in the Convention to the continuation of opposition proceedings by the EPO of its own motion. According to the second sentence of this provision, the opposition proceedings may be continued even when the (sole) opposition is withdrawn. Rule 66(1) EPC states that Rule 60(2), second sentence, EPC is applicable to appeal proceedings mutatis mutandis. According to their wording, these regulations offer no basis in the present case for continuing appeal proceedings, as the sole opponents have not withdrawn their opposition, but their appeal.

4.1 The question arises, however, as to whether Rule 60(2), second sentence, in conjunction with Rule 66(1) EPC may also be interpreted, by extension, as being applicable to the withdrawal of the appeal.

4.2 One objection to this could be that Rule 60(2) EPC is an exceptional provision. It is an exception to the general principle that an authority or court cannot generally continue proceedings if the procedural act resulting in the said proceedings (e.g. request, opposition, appeal, legal action) has been withdrawn. This follows from the "Dispositionsmaxime", (a principle in German law, whereby the parties to an action have the right to determine the manner of disposal of an action without the leave of the court (e.g. by withdrawing their action) which gives the citizen the right to terminate proceedings he had himself initiated, unless procedural law expressly allows them to be continued (as in Rule 60(2) EPC), or prohibits withdrawal (as, for example, in Article 94(2), third sentence, EPC in the case of the request for examination), or makes withdrawal contingent on the consent of the authority or court (as, for example, under the procedural law of individual (not all) Contracting States).

4.3 However, if Rule 60(2) EPC is an exception, according to Board of Appeal case law it may not be interpreted by extension to apply to other cases - here, the withdrawal of the appeal (cf. T 320/87, OJ EPO 1990, 71 (point 6); T 19/90, OJ EPO 1990, 476, 486). In this connection it should also be borne in mind that the legal consequences of withdrawal of the opposition and of withdrawal of an appeal are not absolutely identical. By withdrawing his appeal the appellant (opponent), for example, loses any claim he may have to reimbursement of the appeal fee under Rule 67 EPC, whereas he does not lose this claim if he withdraws his opposition.

5. If the Enlarged Board of Appeal takes the view that it should be possible to continue appeal proceedings despite the sole opponent's appeal being withdrawn, other points of law arise for the Board to consider - i.e. what principles should govern the continuing appeal proceedings.

5.1 If the appeal proceedings can be continued even though the sole opponent has withdrawn his appeal, the declaration of withdrawal of the appeal does not result in the termination of proceedings. Is it therefore necessary in each case for a Board decision to establish that the appeal proceedings are terminated as a result of the withdrawal of the appeal and because there is no reason for continuing the proceedings?

If a decision on the termination of the appeal proceedings is not necessary, must the parties then be notified that the Board does not intend to continue the appeal proceedings? That is what the Board currently does, by forwarding to the parties a letter worded as follows:

"Following withdrawal of the appeal by the appellant (opponent) and examination by the Office of the arguments contained in the appeal, the Board has arrived at the conviction that there are no bars to patentability prejudicing the maintenance of the patent. It is therefore unnecessary to continue the appeal proceedings and, for this reason, they are terminated."

If a party raises objections to such a communication, can the Board then revise its opinion and continue the appeal proceedings?

5.2 According to what principles should the decision on the continuation of the appeal proceedings be taken? Should the public interest and/or the interests of the patent proprietor be taken into account in the process? Must the consent of the patent proprietor to the continuation of the appeal proceedings be obtained, or may they be continued even against his will?

5.3 If the Board decides to continue the appeal proceedings, should the opponent who has withdrawn his appeal also be involved in them as well as the patent proprietor? If this opponent has the status of an "other party" within the meaning of Article 107 EPC in the continuing appeal proceedings, can he in particular file requests other than those he was able to file prior to withdrawing his appeal, e.g. a request for oral proceedings?