3.3. The requirement of a text agreed by the applicant

In T 73/84 (OJ 1985, 241) the board held that the European patent was to be revoked if the patent proprietor stated in opposition or appeal proceedings that he no longer approved the text in which the patent was granted (and, in the case in hand, maintained after opposition) and would not be submitting an amended text (see also T 2405/12, T 655/01, T 1526/06 and the cited case law, T 203/14, T 55/16, T 766/16). According to T 1244/08, such a statement by an appellant, who is the proprietor of a patent which has been revoked by an opposition division, clearly and unambiguously indicating that he no longer has an interest in the appeal proceedings, is equivalent to a declaration of withdrawal of the appeal, and it is not possible to retract it and continue the proceedings (see chapter IV.D.2. "Requests for revocation during opposition and opposition appeal proceedings").

In T 454/15 the proprietor lodged an appeal against the opposition division's decision to revoke its patent, but prior to the oral proceedings stated that it no longer approved of the text of the patent as granted and would not be proposing an amended text. The board stated that where a fundamental requirement for allowing the appeal of the patent proprietor against a decision of the opposition division to revoke the patent was lacking, the proceedings should be terminated by a decision ordering the dismissal of the appeal, without going into the substantive issues (see also T 163/99, T 1637/06, T 784/14, and T 2524/12). The board stressed that its order could not be the same as in T 2405/12 (revocation) because unlike in that case the patent had already been revoked by the opposition division and thus could not be revoked again. However, the order to dismiss the appeal ultimately had the same outcome, namely that the decision to revoke the patent became final.

The board in T 706/00 pointed out that the EPO cannot depart from a request once made. It can only grant or deny the request; it cannot grant more, less or even something different. Unless a grantable text is submitted, at least auxiliarily, the request is rejected in full. In T 549/96, the board noted that an applicant had to unambiguously indicate, at the end of the proceedings, which text he proposed. Otherwise, the examining division would be unable to decide on the basis of which version it should proceed and the application would eventually have to be refused, since there would be no clear request at all. Thus, if an applicant failed to indicate his approval of the text of an allowable subsidiary request, e.g. by express disapproval or by maintaining one or more unallowable higher-preference requests, the examining division could refuse the application under Art. 97(1) EPC 1973 (Art. 97(2) EPC) (see also T 976/97).

In T 237/96 the board held that Art. 113(2) EPC could not be interpreted in the sense that the examining division was bound to accept any amendment which the applicant might propose, only to ensure that there was a version approved by him. In circumstances in which, as in the case in question, amendments proposed by the applicant after the R. 51(4) EPC 1973 (R. 71(3) EPC) communication were with good reason not allowed by the examining division by virtue of R. 86(3) EPC 1973 (R. 137(3) EPC) and the applicant did not give its agreement to any other version, the established practice of the EPO, sanctioned by consistent case law, was to refuse the application on the ground that there was no version approved by the applicant within the meaning of Art. 113(2) EPC.

In the inter partes case T 917/95 a patent proprietor had submitted a new claim but no amended description or drawing. The descriptions and drawings relating to the previous claims were incompatible with the new claim. Because the proprietor failed to appear at the oral proceedings, no documents were available on the basis of which the patent could have been maintained (see also T 725/00 and T 1174/01).

In T 255/05 the board held that under Art. 113(2) EPC, it is the applicant's responsibility to define the text on the basis of which it requests a patent to be granted. When the appellant, even after having been invited to do so by the board, does not clearly indicate the order in which its requests are submitted and what the exact content of each of these requests is, there is no text submitted or agreed by the applicant within the meaning of Art. 113(2) EPC, and no request which could be considered by the board.

In T 690/09 the examining division had refused to consent to the latest submitted set of claims under R. 137(3) EPC, despite these being maintained by the applicant. The board held that this would not automatically revive the previous set of claims that the examining division had consented to consider, unless the applicant had indicated that he was relying on these as an auxiliary request. According to the board, deciding to refuse an application on the ground that claims are not allowable contravenes Art. 113(2) EPC if the applicant is no longer putting forward these claims and amounts to a substantial procedural violation (see for example T 946/96). Similarly, in T 996/12 the board held that, unlike the situation in which an applicant submitted one or more auxiliary requests, submitting a new main request automatically leads to the replacement of any previous main request(s). By basing its decision explicitly on an earlier set of claims, the examining division decided upon a text to which the appellant (no longer) agreed.

In T 1227/14 the appellant (patent proprietor) submitted that, contrary to what was indicated in the minutes of the oral proceedings, it had not delegated the adaptation of the description to the opposition division. It had instead requested a return to written proceedings for the adaptation of the description, but that had been omitted from the minutes. In spite of this, it had not requested the correction of that omission by the opposition division. The opposition division, however, had issued the impugned interlocutory decision on the text in which the opposed patent could be maintained without first submitting that text – containing the division's adapted description – to the patent proprietor. It had thus violated the principle of the right to be heard laid down in Art. 113(2) EPC. Even and especially where adaptation of the description is delegated to an EPO department, there is no scope for releasing it from this obligation.

The board in T 861/16 noted that there was no mention anywhere, in either the minutes or the decision, that the patent proprietor had approved the amended text. Nor had the respondent (opponent) offered any evidence that the patent proprietor had explicitly approved a text submitted before the opposition division's decision. The board held that since the principle of tacit acceptance (qui tacet consentire videtur) was not established in the EPC, it was not enough to ask the patent proprietor if it wished to comment on the amendments to the description carried out by the opposition division. The opposition division had to ensure that the patent proprietor had given its agreement. The board held that in the absence of the patent proprietor's approval of the version as maintained, the proceedings before the opposition division were vitiated by a substantial procedural violation (Art. 113(2) EPC).

In T 536/13 the board held that the "decision according to the state of the file" evidently did not take into account the comments and amended application documents filed by the applicant (appellant) in response to the examining division's second communication. The board found that the decision consequently did not comply with the requirement of Art. 113(2) EPC. The board also found that the decision was not reasoned within the meaning of R. 111(2) EPC. In the absence of any reasoning in respect of the applicant's latest comments and amendments, the board and the appellant were left in doubt as to which of the previously-raised objections still applied. See also chapters III.B.2.4.4 "Failure to consider submissions made after a communication", III.K.3.5. "Decisions according to the state of the file".

In T 1558/18, the opposition division's decision to terminate the opposition proceedings, with the result that the contested patent had been maintained unchanged, had been at direct odds with the appellant's request that the patent be maintained in an amended version. The contested decision thus infringed the fundamental procedural principle of "party disposition" enshrined in Art. 113(2) EPC.