T 0695/89 (Withdrawal of appeal) 09-09-1991

1. Under Article 112(1)(a) EPC, the Boards of Appeal may refer any question to the Enlarged Board of Appeal if they consider that a decision is required in order to ensure uniform application of the law or if an important point of law arises.

2. Under Article 111(1), first sentence, EPC, the responsibility for deciding on the appeal rests with the Board of Appeal. If the appeal is withdrawn and thereby removed, the question arises whether the appeal proceedings are terminated, regardless of the stage they have reached, and the decision of the department of first instance thereby becomes final, or whether - and if so, under what circumstances - the appeal proceedings may in principle be continued, even after the sole appellant has withdrawn his appeal.

3. Neither the European Patent Convention itself nor the Implementing Regulations contain any specific provision regarding the withdrawal of appeals and the consequences thereof.

4. In previous cases, therefore, following generally accepted principles of procedure, the Boards have worked on the assumption that withdrawal of the appeal terminates the proceedings and that the decision of the department of first instance thereby becomes final. This applies equally to ex parte and inter partes proceedings.

5. Until now, at least, this point has posed no problems in respect of ex parte proceedings, since in the event of a single opposition being withdrawn, the only interests affected are those of the applicant or the patent proprietor (see T 41/82, OJ EPO 1982, 256; J 19/82, OJ EPO 1984, 6; J 12/86, OJ EPO 1988, 83).

In considering this issue, however, ex parte proceedings cannot simply be left out of account, since the question whether the withdrawal of an appeal terminates appeal proceedings has a bearing on ex parte and inter partes proceedings alike, and it is possible that the same answer might apply equally to both types of proceedings.

6. For inter partes proceedings, Decision T 85/84 dated 14 January 1986 (unpublished) establishes that when an appeal is withdrawn, the relevant decision of the Opposition Division becomes final, so that only the apportionment of costs remains to be decided. This decision is specifically termed a Kostenentscheidung, i.e. a "decision on costs".

There are two further decisions relating to inter partes proceedings - T 117/86 (OJ EPO 1989, 401) and T 323/89 (cited in 1990 case law report, Supplement to OJ EPO 6/1991, 47) - which are not expressly designated as decisions concerning costs but stipulate that when an appeal is withdrawn by the opponent, the grounds for opposition are no longer to be reviewed, so that the only remaining question to be decided is the apportionment of costs.

Up to now, general practice has been that if a decision on costs has not been requested, the proceedings end without a decision (see, for example, T 13/87, where the opponent withdrew his appeal after the Board had referred an important point of law to the Enlarged Board of Appeal).

The normal procedure is for the Board of Appeal to "terminate" the appeal proceedings (see, for example, T 169/87) by sending a written communication (with no heading and containing only a summary statement of reasons) to the opponent after he has withdrawn his appeal.

7. In inter partes proceedings where the opponent is the appellant and the patent proprietor the respondent, situations may arise for which previous practice does not offer a satisfactory solution.

For example, it sometimes happens that the opponent lodges an appeal and subsequently withdraws it on the basis of a contractual agreement with the patent proprietor, thereby "saving" a patent which the Board regards as unsound.

It may also be the case that a patent proprietor/respondent wishes, following the introduction into the proceedings of further prior art, to limit his patent and is prevented from doing so by the opponent/appellant withdrawing his appeal.

This is so in the present case. Taking account of the deficiencies in the patent which were pointed out in the opponents' statement of the grounds of appeal, the patent proprietors have submitted new claims which, with a few minor changes, would enable the referring Board to maintain the patent. If this cannot be done, there is a possibility that the patent proprietors may have to resort to national limitation proceedings. Not all the Contracting States have legislation providing for proceedings of this kind.

Finally, the case may also arise that the patent proprietor wishes to revoke his patent in the light of further prior art which has been disclosed during the appeal proceedings. A case of this kind (Case No. T 419/89) is currently being considered by Board of Appeal 3.3.1

8. Since the Convention contains no explicit provisions regarding the withdrawal of appeals and the consequences thereof, the question to be considered is whether new ways of resolving the problem can be found by examining it from a different angle.

8.1 A situation comparable to the withdrawal of appeals is dealt with in Rule 60(2), second sentence, EPC, concerning the continuation of opposition proceedings by the European Patent Office of its own motion. Under this Rule, opposition proceedings may be continued even when the opposition is withdrawn.

The question therefore arises whether Rule 60(2), second sentence, EPC might be applicable, by analogy, to appeal proceedings. This could be considered where the facts of the case or the legal position were similar. Opposition is a means, to which any person may have recourse, of contesting a decision and causing the legal validity of a patent to be re-examined. The filing of a notice of opposition sets a particular administrative procedure in train which follows on directly from the grant of the patent. Opposition is not a legal remedy in the classic sense, and unlike an appeal, it therefore has neither suspensive effect nor the effect of transferring the case to a superior tribunal.

An appeal, on the other hand, can only be lodged by a party to the proceedings which led to the decision, insofar as that party is adversely affected by the decision in question (Art. 107 EPC).

A common feature of appeals and oppositions is that they both have to pass the test of admissibility before substantive examination can take place.

However, considering the differences indicated above, this common feature scarcely carries sufficient weight to dispel the misgivings which militate against applying the provision in Rule 60(2) EPC, by way of an analogy, to the withdrawal of an appeal.

From the fact that the scope of Rule 60(2), first sentence, EPC is explicitly limited to opposition proceedings, the obverse inference might be drawn: i.e., following the general procedural principle of party disposition, it could be said that in all other cases when the request or notice is withdrawn, the proceedings should not be continued but terminated.

According to the principle of party disposition, the beginning and end of proceedings are to be determined by the party seeking relief (the plaintiff or appellant) unless the law expressly prohibits the withdrawal of the request (see Art. 94(2), third sentence, EPC, regarding the request for examination) or makes the withdrawal of the request subject to the permission of the authority, court or opponent, or stipulates that proceedings shall continue despite the withdrawal of the request (see Rule 60(2), second sentence, EPC; regarding the withdrawal of an appeal by the opponent, see also paragraph 24(1), third sentence, of the Swedish Patent Law, which nevertheless provides for an appeal to be considered where there are particular reasons for doing so - Bl. f. PMZ 1985, 174, 177; Industrial Property, National Laws Sweden, No. 10, October 1987).

The established practice of the Boards of Appeal basically follows this principle.

8.2 It is also to be considered whether any further progress towards resolving the question can be made by referring to the principle of ex officio prosecution, which in proceedings before the European Patent Office applies together with the principle of party disposition.

The principle of ex officio prosecution is enshrined in Article 114(1) EPC, which stipulates that in proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. Plainly, under the terms of this provision, the investigative principle only applies to the examination of the facts. The second part of the sentence, concerning the relief sought by the parties, would also seem to offer little scope for wider interpretation, since it clearly refers, in all three languages, solely to the examination of the facts. This again could lead one to infer that other requests, especially those affecting the essence of the appeal proceedings - requests to lodge or withdraw an appeal, for example - are subject to the principle of party disposition, which is binding on the Boards.

8.3 Finally, the question has to be considered of the extent to which the termination of appeal proceedings by the withdrawal of the appeal may be opposed on substantive grounds.

The objection most frequently voiced is that cases may arise in which the decision of the department of first instance has been seen to be untenable but the Board nevertheless finds itself having to stand by and watch while the flawed decision enters into effect because the appeal has been withdrawn. This is felt to be intolerable, to be incompatible with the aims of the patent grant procedure, and to contradict the principle that the public must be protected.

The question arises whether this view properly recognises the purpose and nature of appeal proceedings, which are initiated at the sole instigation and in the sole interest of the appellant in order to obtain a judicial review of the contested decision. If the party adversely affected by the decision does not exercise his right of appeal, or if he fails to comply with the relevant time limit, the decision of the department of first instance remains final and binding, no matter whether it was right or wrong. Nor is there any guarantee against the Boards of Appeal reaching a wrong decision. Taking all these factors into account, are those isolated cases really to be regarded as intolerable in which, on the basis of an agreement concluded for commercial reasons by the parties in opposition appeal proceedings, an appeal is withdrawn and the proceedings are thereby terminated? Although a flawed decision on the maintenance of a patent or the rejection of an opposition may affect the commercial interests of specific companies, it can hardly be said to impinge on the public at large. The notion that the Boards, as custodians of the general public interest, should be able to continue the appeal proceedings would therefore seem to be somewhat at odds with reality.

8.4 On the other hand, a further substantive reason posing an obstacle to the termination of the proceedings might be seen in the present case, where the patent proprietor is voluntarily seeking to limit his patent and finds himself prevented from doing so by the withdrawal of the appeal, obliging him to resort to the more complicated and expensive national route.

Because the European Patent Convention, unlike the Community Patent Convention, makes no provision for limitation proceedings, the patent proprietor may find himself faced with a patent which is no longer sound in the text as granted and which he therefore cannot use to proceed against an infringer. This would appear to be a problem of fundamental importance.

If a satisfactory solution cannot be found on the basis of the Convention and the Implementing Regulations as they now stand, the possibility could be considered of amending the Implementing Regulations or adding a new provision.

9. If the Enlarged Board of Appeal takes the view that the withdrawal of the sole appellant's appeal terminates appeal proceedings, a further question arises with regard to numerous cases of inter partes proceedings involving several different opponents: i.e. the question whether appeal proceedings are terminated for all the parties if the opponent, who is also the appellant, withdraws his appeal, but the proceedings also involve other opponents who are not appellants. This problem does not arise in the present case, however, since the proceedings only involve a single opponent who is also the appellant. The Board merely wishes to draw attention to the problem.