Pages 887-890

BOARDS OF APPEAL

Decisions of the Enlarged Board of Appeal

Decision of the Enlarged Board of Appeal dated 13 June 1994 - G 8/93

(Translation)

Composition of the Board:

Patent proprietor/Respondent: Serwane, Karl

Opponent/Appellant: Odenwald-Chemie GmbH

Headword: Withdrawal of opposition/SERWANE II

Article: 114(1) EPC

Rule: 60(2), 66(1) EPC

Keyword: "Withdrawal of opposition without withdrawal of appeal" - "Termination of appeal proceedings"

Headnote

The filing by an opponent, who is sole appellant, of a statement withdrawing his opposition immediately and automatically terminates the appeal proceedings, irrespective of whether the patent proprietor agrees to termination of those proceedings and even if in the Board of Appeal's view the requirements under the EPC for maintaining the patent are not satisfied.

Summary of Facts and Submissions

I. In case T 148/89, which is pending before Technical Board of Appeal 3.2.2, the Opposition Division issued a decision rejecting the opposition of the sole opponent. The opponent appealed against that decision. The patent proprietor filed observations in reply. The Board of Appeal issued a communication accompanying a summons to oral proceedings. Oral proceedings took place, and the proceedings were thereafter continued in writing. Subsequently the opponent filed a letter stating that "the opposition ... is hereby withdrawn".

Following further correspondence between the Board of Appeal and the patent proprietor, the Board of Appeal issued a decision dated 24 June 1993 (T 148/89, OJ EPO 1994, 898, in this issue), in which the following question was referred to the Enlarged Board of Appeal:

"Are appeal proceedings terminated when the sole appellant and opponent has withdrawn his opposition and the patent proprietor requests termination of the proceedings, even when, in the Board of Appeal's view, the patent as granted does not satisfy the requirements of the EPC?"

II. The decision of referral mentions a number of earlier decisions of the Boards of Appeal as indicating that the withdrawal of an opposition during appeal proceedings does not bring such proceedings automatically to an end, and that in some cases the examination of the opposition was continued on the basis of Article 114(1) EPC and Rule 60(2) EPC. The decision goes on to refer to decisions G 7/91 and G 8/91 (OJ EPO 1993, 346 and 356), in which it was held that the withdrawal of an appeal by the sole appellant immediately and automatically terminates the appeal proceedings insofar as the substantive issues are concerned, in accordance with the generally recognised principle of party disposition, and that Rule 60(2) EPC is not applicable to appeal proceedings. Reference is also made to decisions G 9/91 and G 10/91 (OJ EPO 1993, 408 and 420), in which the Enlarged Board held that in contrast to the purely administrative character of opposition procedure, the appeal procedure is to be considered as a judicial procedure, which is by its nature less investigative than an administrative procedure.

The referring Board went on to raise the possibility that since according to decision G 7/91 withdrawal of a sole appeal brings the appeal procedure to an end, in a case such as the present where the sole appellant has withdrawn the opposition rather than the appeal, this may be intended to allow the procedure to be continued. Furthermore, in such a situation, by analogy with what is stated in decisions G 9/91 and G 10/91, it is possible that the patent proprietor's request that the proceedings should be terminated should be decisive in this respect. In the present case both parties are in agreement that the proceedings should be terminated.

III. Both parties to the appeal proceedings were invited to file observations concerning the question referred to the Enlarged Board. The opponent has not filed any such observations. The patent proprietor has filed observations, in which it is emphasised that the withdrawal of the opposition can be recognised as intending that the entire proceedings should be brought to an end; the patent proprietor has also formally requested that the proceedings in both instances should be declared closed. By way of auxiliary requests, the patent proprietor has requested that if the proceedings are not terminated, he should be allowed to defend the patent in further proceedings, and that oral proceedings should be appointed.

Reasons for the Decision

1. The procedure governing opposition proceedings is set out in Part V of the EPC ("Opposition procedure") containing Articles 99 to 105 EPC. Proceedings before an Opposition Division are terminated upon issue of a decision which decides upon the issues raised by the opposition; because such a decision is a final decision in the sense that, thereafter, the Opposition Division has no power to change its decision - see decision G 4/91 (OJ EPO 1993, 707). When such proceedings are terminated by a decision of the Opposition Division, a party to the proceedings who is adversely affected by such decision may commence appeal proceedings by filing an appeal. The procedure governing appeal proceedings is governed by Part VI of the EPC ("Appeals procedure") containing Articles 106 to 112 EPC. Clearly the appeal proceedings can only be commenced when the opposition proceedings are terminated, and the two proceedings are separate from each other.

2. Since once the Opposition Division has taken its decision the proceedings on the opposition cease to be pending before it, a procedural act taken by a party in subsequent proceedings can only relate to the latter and their subject. In an appeal by an opponent, what is at issue in the appeal proceedings is whether there are any grounds for opposition which prevent maintenance of the patent as granted or amended. Withdrawal by the opponent and appellant of his "opposition" can therefore only mean that he no longer wishes the Board of Appeal to rule on the matter. Logically, this can only be regarded as withdrawal of the appeal. Where withdrawal is by the sole opponent and appellant, this - as the Enlarged Board of Appeal has ruled in decisions G 7/91 and G 8/91 (OJ EPO 1993, 346 and 356) terminates the appeal proceedings as far as all substantive issues are concerned. In such circumstances, the patent proprietor's views about termination of the appeal proceedings, or those of the competent Board about the validity of the patent in suit, have no bearing on the matter (cf. Reasons, points 10 and 11, G 7/91 and G 8/91). The filing by an opponent, who is sole appellant, of a statement withdrawing his opposition therefore immediately and automatically terminates the appeal proceedings, irrespective of whether the patent proprietor agrees to termination of those proceedings and even if in the Board of Appeal's view the requirements under the EPC for maintaining the patent are not satisfied.

Order

For these reasons it is decided that:

The filing by an opponent, who is sole appellant, of a statement withdrawing his opposition immediately and automatically terminates the appeal proceedings, irrespective of whether the patent proprietor agrees to termination of those proceedings and even if in the Board of Appeal's view the requirements under the EPC for maintaining the patent are not satisfied.