7.3.1 Article 114(1) EPC and withdrawal of the appeal

Under Art. 114(1) EPC the EPO shall examine the facts of its own motion in proceedings before it. The question has arisen whether this is relevant in the event of the withdrawal of the appeal.

In G 7/91 and G 8/91 (OJ 1993, 346 and 356) the Enlarged Board of Appeal ruled that as far as the substantive issues settled by the contested decision at first instance were concerned, appeal proceedings – whether ex parte or inter partes – were terminated when the sole appellant withdrew his appeal. The Enlarged Board found that the provision of Art. 114(1) EPC 1973 did not allow for continuation of the proceedings once the appeal had been withdrawn. This was evident from the legislative rationale of the EPC. If Art. 114(1) EPC 1973 applied to all withdrawal situations, then the R. 60(2) EPC 1973 (R. 84 EPC) exception for oppositions would be superfluous. Nor was withdrawal of the appeal covered by "relief sought" within the meaning of Art. 114(1), second part of sentence, EPC 1973 to which the EPO would not be restricted in examining the facts; it constituted a procedural act not requiring the consent of the relevant board (point 8 of the Reasons). The appeal procedure was that proper to an administrative court, so any exception from general procedural principles such as the "principle of party disposition" had to be supported by much weightier grounds than in administrative proceedings. Neither Art. 114(1) EPC 1973 nor the interests of the general public or the respondent constituted arguments against this interpretation. Art. 114(1) EPC 1973 was restricted to the examination of the facts. The interests of the general public were primarily safeguarded by the opposition system. It could be assumed that the patent did not disturb those who had not filed an opposition, so there was no need to continue the appeal proceedings in order to safeguard their interests. Nor were the respondents' interests any more in need of protection if they had not themselves filed an appeal, as was explained in detail in G 2/91 (OJ 1992, 206). Finally, the Enlarged Board pointed out that when the sole appellant withdrew his appeal, the suspensive effect of the appeal lapsed and the opposition division's decision thus became final as regards the substantive issue.