G 0008/91 (Withdrawal of appeal) 05-11-1992

1. The points of law referred to the Enlarged Board of Appeal are important matters of principle and have a considerable practical significance, as is clearly shown by the sheer number of appeals withdrawn in recent years. According to the Registry, in opposition appeal proceedings a total of 95 appeals were withdrawn by opponents and 39 by patent proprietors during 1990 and 1991. The total number of appeals withdrawn by applicants in ex parte proceedings over the same period was 24.

2. In the case law of the Boards of Appeal, the possibility of continuing the appeal proceedings after withdrawal of the sole appellant's appeal has not so far been contemplated in either ex parte or inter partes (technical or legal) proceedings, at least in so far as the substantive issues are concerned. Usually, the Board members merely note the fact that the appeal has been withdrawn, and the parties are then informed by the Registry that the appeal proceedings have accordingly been terminated. There are special forms for use in such cases (EPO Forms 3312, 3347, 3348). However, Board of Appeal 3.3.1 has pointed out in the decision which it referred that its current practice, in the event of the sole opponent's appeal being withdrawn, is to write to the parties in the following terms: "Following withdrawal of the appeal by the appellants (opponents) and examination by the Office of the arguments contained in the appeal, the Board has arrived at the conviction that there are no bars to patentability prejudicing the maintenance of the patent. It is therefore unnecessary to continue the appeal proceedings and, for this reason, they are terminated." The wording of this letter conveys the impression that the Board does not really consider itself bound by the appeal's withdrawal and feels that it could, in principle, continue the appeal proceedings. Despite this, it seems that Board of Appeal 3.3.1 has never in practice continued appeal proceedings following withdrawal of the appeal.

3. The case law of the Boards of Appeal referred to above, according to which continuation of appeal proceedings is not contemplated once the appeal has been withdrawn, is based on a number of different decisions. Firstly, in a decision in case J 19/82 (OJ EPO 1984, 6), the Legal Board of Appeal ruled in ex parte proceedings that, in general, an appeal pending before a Board of Appeal of the EPO could be withdrawn without the consent of the Board concerned. This followed from the EPC itself, which specifically stated when the withdrawal of a request was not permitted, an example this being the prohibition on withdrawal of a request for examination under Article 94(2) EPC. In this connection the Legal Board of Appeal also referred to Rule 60(2) EPC, which set out the consequences of withdrawal of an opposition. In its decision regarding case T 85/84 (unpublished), Technical Board of Appeal 3.4.1 found in inter partes proceedings that the withdrawal of the sole opponent's appeal meant that the decision of the Opposition Division on the substantive issue had become final. The award of costs (i.e. a procedural question) was the only issue remaining to be decided. This view is also reflected in other Board of Appeal decisions (cf. for example T 117/86, OJ EPO 1989, 401 and T 323/89, supplement to issue No. 6 of OJ EPO 1991, 47).

4. Since it is the time-honoured practice, sanctioned by consistent case law, to regard the appeal proceedings as terminated, in so far as the substantive issues are concerned, once the sole opponent's appeal has been withdrawn, and since, to the knowledge of the Enlarged Board of Appeal, no objections have been raised to date either by the parties or the general public, this practice should not be changed unless there are absolutely convincing reasons for doing so. Otherwise the continuity and reliability of the Boards' activity in relation to the appeal procedure would obviously be open to question.

5. Existing practice accords with the general procedural principle of party disposition, according to which a public authority or a court normally may not continue proceedings if the procedural act which gave rise to the proceedings (such as the filing of an appeal) has been retracted, unless procedural law specifically permits continuation. Examples of such specific exceptions in the EPC are given in the decision of the Legal Board of Appeal mentioned under point 3 above. In the decision which it referred, Board of Appeal 3.2.2 cited an example of a similar exception in national law, i.e. paragraph 24(1), third sentence, of the Swedish Patent Law, under which the opponent's appeal may be considered even after it has been withdrawn where there are particular reasons for doing so. Section 34 III 2 of the old German Patent Law having been rescinded, there is, to the Enlarged Board's knowledge, no corresponding exception in the legislation of the other EPC Contracting States.

6. In the decision which it referred, Board of Appeal 3.3.1 touched upon the question whether the exception in Rule 60(2) EPC, concerning the effect of withdrawal of the opposition, in conjunction with Rule 66(1) EPC can also be applied, by extension, to the withdrawal of the appeal. Referring Board 3.2.2 likewise discussed in its decision the application of the exception in Rule 60(2) EPC to appeal proceedings. Both Boards, however, expressed misgivings about invoking the Rule 60(2) exception in this way.

7. The Enlarged Board of Appeal shares these misgivings. Rule 60(2) EPC is not formally excluded by the general reference in Rule 66(1) EPC to the provisions relating to proceedings before the department which has made the decision from which the appeal is brought. Nevertheless it cannot be inferred from this that the possibility - for which provision is made in relation to the opposition procedure only - of the EPO continuing the proceedings of its own motion after the opposition has been withdrawn necessarily extends to the appeal procedure. The matter has to be seen in relation to the general logic of the EPC. From this viewpoint, the fact that the two procedures are of a different legal nature is one reason for not applying Rule 60(2) in conjunction with Rule 66(1) EPC in this way. Whereas the opposition procedure is a purely administrative procedure, the appeal procedure must be regarded as a procedure proper to an administrative court, in which an exception from general procedural principles, such as the principle of party disposition, has to be supported by much weightier grounds than in administrative procedure. Furthermore, the exception in Rule 60(2) EPC has to be viewed in the special context of the EPC's post-grant opposition system. In a procedure of this kind there are objective reasons for retaining a control mechanism, to take account of the new facts, evidence and arguments presented by an opponent which the Examining Division had no possibility of considering before the patent was granted. This special feature of post-grant opposition does not, however, constitute sufficient grounds for generally extending the scope of the exception in Rule 60(2) EPC to embrace the appeal procedure as well.

8. In the decision which it referred, Board of Appeal 3.2.2 mentions the application of the principle of ex officio prosecution under Article 114(1) EPC as a legal basis for continuing the appeal proceedings where the appeal has been withdrawn. The same principle is invoked by the respondents in case T 357/89. Nevertheless, Board 3.2.2 itself expresses doubts as to whether this principle does in fact provide such a legal basis, given that the principle is confined to examination of the facts. The Enlarged Board of Appeal is also of the opinion that Article 114(1) EPC does not sanction the continuation of appeal proceedings after the appeal has been withdrawn. This is evident from the legislative rationale of the EPC. If it were the case that Article 114(1) EPC itself had to be applied across the board to withdrawal situations of this kind, then the above-mentioned exception in Rule 60(2) EPC regarding withdrawal of the opposition would surely be superfluous. It should be noted, moreover, that the withdrawal of the appeal does not come under the category of "relief sought", within the meaning of Article 114(1), second part of sentence, EPC, to which the EPO would not be restricted in the examination of the facts, but constitutes a procedural act not requiring the consent of the relevant Board of Appeal (cf. point 3 above).

9. The two referring Boards of Appeal, like the respondents in case T 357/89, cited the public interest as potentially constituting substantive grounds for not considering the proceedings terminated by withdrawal of the appeal. It was intolerable and incompatible with the aims of the patent grant procedure if a Board, in a case in which it realised that the decision of the department of first instance to maintain the patent was untenable, had to "stand by and watch" while the "flawed" decision entered into effect because of the withdrawal. This contradicted the principle that the public must be protected.

10. This gives rise to the following comments: 10.1 In the European patent system, the public interest is primarily safeguarded by the fact that within nine months from the publication of the mention of the grant of the European patent, any person may give notice of opposition to the patent. In principle, therefore, it must be assumed that the patent does not disturb those who have not filed opposition. It is therefore at variance with the thinking on which the European patent system is based to continue the appeal proceedings where the appeal of the sole opponent (or of the patent proprietor if the patent has been maintained in amended form) has been withdrawn merely in order to safeguard the interests of those who filed no opposition at all. Whatever the circumstances, the possibility - mentioned in this respect under point 7 above - of continuing the opposition proceedings by way of exception after the opposition has been withdrawn must be regarded as sufficient. In this connection the possibility of bringing proceedings for revocation before national courts should be borne in mind.

10.2 The argument that a Board of Appeal may sometimes have to "stand by and watch" while a "flawed" decision of the department of first instance becomes final as a result of the appeal being withdrawn does not justify a departure from the principle of party disposition. In the first place a flaw in the decision at first instance is seldom patently obvious. Furthermore, as Board of Appeal 3.2.2 has pointed out, it should be borne in mind that if the party adversely affected by the decision does not exercise his right of appeal, or if he fails to comply with the time limit for appeal or for filing the statement of the grounds of appeal, the decision at first instance remains final and binding, no matter whether it was right or wrong. As a matter of general principle, it is not the function of the Boards of Appeal to carry out a general review of decisions at first instance, regardless of whether such a review has been sought by the parties. On the contrary, the Boards' function is to consider appeals that are admissible and pending.

10.3 There is no contradiction between the foregoing conclusions and the principle that only valid European patents should be granted and maintained in force, so far as it lies within the power of the European Patent Office to achieve this, as the Enlarged Board of Appeal put it in case G 1/84 (cf. OJ EPO 1985, 299, "The question put", point 3). However, efforts to achieve this objective must remain within the framework of generally recognised procedural principles unless there are serious reasons for introducing an exception, which is not the case here. It also has to be remembered that these exceptions often give rise to procedural complications and that there is a danger of them being applied arbitrarily.

11.1 Board of Appeal 3.2.2 also made the point that the patent proprietors (respondents) had an interest in continuing the appeal proceedings after the sole opponent's appeal had been withdrawn, so that the patent could be limited (see Section VI above). In this connection, attention needs to be drawn first of all to the finding of the Enlarged Board of Appeal in its decision of 29 November 1991 in case G 2/91 (OJ EPO 1992, 206). According to that finding it was clear from generally recognised principles of procedural law that the appellant alone could decide whether the appeal filed by him was to stand, and that parties to proceedings under Article 107, second sentence, EPC (such as the patent proprietors/respondents in the present case) had no independent right of their own to continue appeal proceedings if the appellant withdrew his appeal (reasons, 6.1). The question left undecided in the above case as to whether the appeal proceedings could not be continued by the Office of its own motion also has to be answered in the negative in the present case. It would scarcely be compatible with the procedure proper to an administrative court, and with the status of the Boards of Appeal as the bodies competent for the conduct of that procedure, to continue the appeal proceedings after the appeal had been withdrawn, merely in order to enable the respondent, where he is the patent proprietor, to strengthen his legal position if he wishes to do so. As well as giving rise to various procedural complications (cf. for example question 2, (b) and (c) in case G 7/91), such an exception to the principle of party disposition would presuppose that, as a general rule, the Boards of Appeal had a wider and heavier responsibility towards patent proprietors than towards opponents. There is no basis for this in the EPC. Such a view, were it to be endorsed, might undermine confidence in the objectivity and impartiality of the Boards of Appeal, especially in borderline cases. This situation clearly has to be avoided. In this connection it should also be remembered that there is nothing in practice to prevent a patent proprietor from limiting his patent if he himself is convinced that a limitation is necessary or desirable. In some Contracting States this can be done in ex parte proceedings, and it is usually also possible to renounce patent protection for untenable subject-matter when a revocation or infringement case is being tried. The fact, therefore, that a patent extending somewhat beyond its legitimate scope is maintained does not in any way entail a final loss of rights to its proprietor.

11.2 Another point worth noting in this connection is that, as a result of the withdrawal of the sole opponent's appeal, the suspensive effect of the appeal under Article 106(1) EPC lapses and the decision of the Opposition Division accordingly becomes final in so far as the substantive issue is concerned. From that point on, the Board of Appeal has no power to consider the patent within the meaning of Article 113(2) EPC. The terms of that provision as regards obtaining the patent proprietor's agreement to the text of the patent therefore do not apply.

12. To sum up, there are no convincing grounds for abandoning or changing the current practice of the Boards of Appeal according to which, in so far as the substantive issues settled by the contested decision at first instance are concerned, the appeal proceedings are regarded as terminated by virtue of the withdrawal of the sole appellant's appeal, whether in ex parte or in inter partes proceedings. An answer to the points referred as question No. 2 in each case is therefore superfluous.