BOARDS OF APPEAL
Decisions of the Technical Boards of Appeal
Decision of Technical Board of Appeal 3.2.2 dated 24 June 1993 - T 148/89 - 3.2.2*
(Translation)
Composition of the Board:
Chairman: | G. Szabo |
Members: | C. Holtz |
| J. Du Pouget de Nadaillac |
Patent proprietor/Respondent: Serwane, Karl
Opponent/Appellant: Odenwald-Chemie GmbH
Headword: Withdrawal of opposition/SERWANE
Article: 112(1)(a) and 114(1) EPC
Rule: 55(c), 60(2) and 66(1) EPC
Keyword: "Withdrawal of opposition without withdrawal of appeal" - "Termination of appeal proceedings" - "Important point of law" - "Referral to the Enlarged Board of Appeal"
Headnote
The following point of law is 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Are appeal proceedings terminated when the sole appellant and opponent has withdrawn his opposition and the patent proprietor requests termination of the proceedings, even when, in the Board of Appeal's view, the patent as granted does not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?
Summary of Facts and Submissions
I. After filing an appeal against the Opposition Division's decision of 26 January 1989 to maintain European patent No. 96 308, the appellant withdrew its opposition on 8 November 1990.
II. Following referral of a number of questions to the Enlarged Board of Appeal (G 7/91 and G 8/91), the Board notified the parties that the Enlarged Board's decisions should be awaited in these cases, since they might relate to the termination or continuation of the proceedings after withdrawal of the opposition.
III. On 18 January 1993, after decisions G 7/91 and G 8/91 (OJ EPO 1993, 346) had been delivered, the appellant was given the opportunity, in the event that it intended to withdraw the appeal, to do so in writing as soon as possible.
IV. The appellant, in a submission dated 26 February 1993, explicitly referred only to its earlier withdrawal of the opposition and, asking for the Board's understanding, stated that it was no longer a party to the matter and intended to make no requests. The appeal as such was not withdrawn.
V. The patent proprietor, in a letter dated 11 March 1993, stated that in his opinion because the opposition was withdrawn, so too was the appeal. He therefore requested that the appeal proceedings be declared terminated. Furthermore, the patent proprietor stated that the appellant had informed him that, in the appellant's view, there was no reason to provide further explanations following the withdrawal of the opposition, since the withdrawal of the opposition should be regarded as automatically concluding the matter of the appeal.
Reasons for the Decision
1. Two decisions of the Enlarged Board of Appeal, G 7/91 and G 8/91, deal with the consequences of withdrawal of an appeal. The extent of the examination, both in opposition and in appeal proceedings, is discussed in G 9/91 and G 10/91 (OJ EPO 1993, 408 and 420). In the present case, the central issue is what the procedural consequences are to be of a withdrawal of the opposition during the appeal proceedings when the appeal itself is not withdrawn.
2. According to Board of Appeal case law, the withdrawal of an opposition, having regard to Rule 60(2) EPC, does not necessarily result in the automatic termination of the proceedings (cf. for example T 117/86, OJ EPO 1989, 401, and T 197/88, OJ EPO 1989, 412, T 357/89, OJ EPO 1993, 146 (referring decision in case G 7/91), T 695/89, OJ EPO 1993, 152 (referring decision in case G 8/91), and T 789/89 of 11 January 1993).
However, the decisions taken differ as to the procedural consequences. In some cases the Board concerned has deemed the withdrawal to be a withdrawal of the appeal and has declared the proceedings terminated, e.g. T 117/86; in others, e.g. T 197/88, the proceedings were continued. Case T 789/89 related to an opponent who was the respondent to an appeal, and the patent was maintained in amended form at the request of the patent proprietor.
Case T 60/91 (see G 9/92, OJ EPO 1994, 875), in which a question relating to the prohibition of a worse outcome (reformatio in peius) was referred to the Enlarged Board of Appeal, seems also to be of interest in the present case, at least in the event that the Enlarged Board were to decide that a case may not be decided to the disadvantage of the sole remaining party (after the opposition has been withdrawn).
In case T 377/88, the Board referred to its competence under Article 114(1) in conjunction with Rule 60(1) EPC and continued its examination of the case. In decision T 544/89 (referring to T 156/84 and T 197/88), the Board stressed its responsibility vis-à-vis the public and, under Article 114(1) EPC, examined the full facts of the case after withdrawal of the opposition.
In the present case, the result of the withdrawal of the opposition was that the proceedings were initially continued pursuant to Article 114(1) EPC in conjunction with Rule 60(2), last sentence, and Rule 66(1) EPC.
3. In decisions G 7/91 and G 8/91, the Enlarged Board of Appeal explained that the appeal proceedings are necessarily terminated on withdrawal of the appeal by the sole appellant insofar as the substantive issues settled by the contested decision of the first instance are concerned, and that a Board of Appeal cannot continue opposition appeal proceedings after the sole appellant, who was the opponent before the first instance, has withdrawn his appeal.
In the reasons for these decisions, reference was made, inter alia, to the fact that the exception in Rule 60(2) EPC is not applicable to appeal proceedings. Rule 60(2) EPC had to be viewed in the context of the EPC's post-grant opposition system, in which there were objective reasons for retaining a general control mechanism (No. 7 of the Reasons). According to the present Board's interpretation of this reason, this, however, is applicable only before the first instance.
Furthermore, the Enlarged Board of Appeal saw no cause for concern in the fact that the termination of the proceedings did not take account of the public interest, even if a Board had to "stand by and watch" while a "flawed" decision became final as a result. In this connection it commented that it must be assumed in principle that the patent does not disturb those "who have not filed opposition" (No. 10.1 of the Reasons). Although it did not address the question of a withdrawal of the opposition without withdrawal of the appeal, its comment would be valid in this situation also, if the patent proprietor were in agreement.
In the Board's view it is of relevance that in appeal proceedings, also, the patent proprietor may have an interest in making the claims allowable by way of amendments. In such a case he must be given an opportunity to do so. On this point, the Enlarged Board of Appeal commented in G 7/91 (No. 11.1) that in accordance with generally recognised principles of procedural law an appellant alone could decide whether an appeal filed by him was to stand and a party to proceedings under Article 107 EPC (in this case the patent proprietor) had no independent right of his own to continue the proceedings if the appeal were withdrawn. In the present case, however, the question arises of whether the patent proprietor's interest in having allowable claims can result in the proceedings being continued in the event of a withdrawal of the opposition.
4. According to Enlarged Board of Appeal decision G 9/91 and opinion G 10/91, a Board of Appeal's competence to examine an opposition is restricted to the scope of the opposition as indicated in the notice of opposition pursuant to Rule 55(c) EPC.
4.1 In this context it was further noted in G 10/91 that the proceedings at first instance, that is to say before the Opposition Division, differ from the proceedings at second instance insofar as the Opposition Division is empowered, in exceptional cases, to examine grounds other than those indicated in the notice of opposition, whereas the Board of Appeal may examine such fresh grounds only with the consent of the patent proprietor.
In this connection, the Board pointed out that the appeal offered the losing party the opportunity to challenge the Opposition Division's decision on its merits. It was not in conformity with that purpose to consider grounds other than those examined at first instance. Furthermore, the appeal procedure was a judicial procedure, which was less investigative than an administrative procedure.
4.2 The Board would comment on this as follows:
The appellant, who is also the opponent, is completely at liberty to decide whether to bring the proceedings to an end, even against the interest of the patent proprietor or any wish the Board may have to continue the proceedings with reference to Article 114(1) EPC (cf. G 7/91).
It follows from this that the reason why the appellant in the present case is not terminating the proceedings by withdrawing the appeal probably lies in the fact that he himself does not wish to bring about this result. This choice, however, would be relevant only if the EPC system as a whole were to be interpreted as meaning that Article 114(1) EPC was applicable as a matter of course in conjunction with Rules 60(2) and 66(1) EPC. The above-mentioned conclusion (No. 2) that the proceedings should initially be continued was reached on the basis of this interpretation.
By analogy with the situation under Rule 60 (2) EPC, however, it is also possible that the patent proprietor would like to continue the proceedings, or that the EPO considers Article 114(1) EPC to be applicable. The following question then arises: in this procedural situation, would the opinion of the patent proprietor who requests that the proceedings be terminated be legally decisive, so that the proceedings should be terminated immediately?
5. The above-mentioned observations of the Enlarged Board of Appeal do not relate directly to the question of the consequences of a withdrawal of the opposition during the appeal proceedings; however, its reasons and considerations are important for interpreting the procedural consequences of a withdrawal of the opposition.
The following points should therefore be noted in connection with the consequences of a withdrawal of the opposition during the appeal proceedings.
5.1 The comment by the Enlarged Board of Appeal to the effect that the opponent who has withdrawn his appeal is no longer disturbed by the granting of a patent also applies to the present case insofar as it is to be assumed that the sole opponent who withdraws his appeal similarly cannot consider himself disturbed. According to decision G 8/91, No. 10.1, other members of the public, who have not filed opposition, similarly cannot consider themselves disturbed by the patent. For this reason the two cases should be treated identically. "Where there is no plaintiff, there is no judge". The question arises: "Where there is no opponent, is there no plaintiff?"
5.2 The difference between the purpose of the procedure before the Opposition Division and that before the Board of Appeal is a further argument in favour of terminating the appeal proceedings immediately after withdrawal of the opposition if the patent proprietor waives his right to procure allowable claims by way of amendments.
5.3 The principle of examination pursuant to Article 114 EPC no longer seems applicable in this situation, as this would disregard the reasons emphasised by the Enlarged Board of Appeal.
5.4 The interpretation by the Enlarged Board, to the effect that the opposition proceedings are an exception to the principle that the European patent as granted represents a bundle of patents, also seems to suggest the conclusion that the withdrawal of an opposition (if only one opposition has been filed) terminates the appeal proceedings. There would then be no further reason for a centralised procedure.
6. According to previous case law, an opponent who has withdrawn his opposition is no longer a party to the case (see, for example, T 117/86). On the other hand, a request for apportionment of costs by the respondent (patent proprietor) can still be made under Article 104 EPC. If the opponent is the respondent (T 789/89), the only question remaining for him, similarly, is whether to make a request for apportionment of costs.
Since the opponent is to be regarded as no longer a party to the case, and therefore only one party remains, who in this case has made no application for amendments to the patent, it would seem expedient to handle the case in such a manner that the proceedings are concluded by a formal decision, either a finding that no request is made in respect of costs or, after the making of such a request, by giving a brief explanation in the matter of costs.
7. It should also be noted, however, that in the present case the statements made by the parties have made it clear that the withdrawal of the opposition is the consequence of an agreement between the two parties. Although it is uncertain, in the absence of further proceedings, whether the patent satisfies the requirements of the EPC, the substantive facts are immaterial in assessing the consequences of a withdrawal of the appeal (cf. G 7/91 and G 8/91).
8. In the Board's view, there thus arises an important point of law with regard to the position of the parties where the sole opponent and appellant has withdrawn his opposition and states that he is no longer a party to the case, while the patent proprietor has requested that the appeal proceedings be declared terminated.
Order
For these reasons it is decided that:
The following point of law is 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?