T 0943/22 - Withdrawal opposition by respondent

Key points

• The OD maintains the patent in an amended form, finding that the claims as granted lack basis in the application as filed. Both parties appeal. The opponent withdraws the opposition in the course of the appeal.
• The Board finds that the claims as granted do have basis in the application as filed.
• Under Article 111(1) EPC, " The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution".
• Under Rule 84(2) EPC, the EPO may continue the opposition of its own motion if the opposition is withdrawn.
• In T 0228/16, the board remitted the case after the withdrawal of the opposition, in an appeal of the proprietor. The proprietor had successfully argued that the (amended) claims were sufficiently disclosed, thereby overcoming the grounds of the impugned decision.
• The OD after the remittal considered inventive step of the operative set of claims in an interlocutory decision (link) that the patent could be maintained in amended form. 
• The present Board: "While Rule 84(2) EPC (Rule 60(2) EPC 1973) provides that, after withdrawal of an opposition, the European Patent Office may continue the opposition proceedings of its own motion, this option to continue the proceedings after withdrawal of the opposition does not apply in appeal proceedings (G 8/91, OJ EPO 1993, 346, point 7 of the Reasons [*]). The Enlarged Board of Appeal concluded in G 8/93 (OJ EPO 1994, 887) that the withdrawal of the opposition by an opponent who is the sole appellant immediately and automatically terminates the appeal proceedings, even if in the board's view the requirements under the EPC for maintaining the patent are not satisfied. In this case, the opponent was not the sole appellant, and therefore the appeal proceedings had to be continued in view of the still-pending appeal by the proprietor; however, after allowing the proprietor's appeal, taking into account the above-quoted principles established by the Enlarged Board of Appeal, the board may not assess the remaining grounds of opposition raised by the former opponents/interveners. The board's finding that the ground for opposition under Article 100(c) EPC does not preclude the maintenance of the patent as granted implies that the patent is to be maintained as granted."
• *: G 8/91 is really only about a withdrawal of an appeal, and para. 7 of it should be understood in that context, as is clear from the immediately preceding paragraph 6, which speaks of "the withdrawal of the appeal".
• Finally, the order of the decision is that the patent is maintained as granted. As a comment, I understand that under Rule 84(2) the decision (of the OD) is that the opposition is terminated or that the opposition is terminated without a decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t220943eu1

4. Procedural issues

After the opponent withdrew its opposition and its appeal on 26 June 2023, the proprietor remained as the sole party in these opposition and appeal proceedings.

While Rule 84(2) EPC (Rule 60(2) EPC 1973) provides that, after withdrawal of an opposition, the European Patent Office may continue the opposition proceedings of its own motion, this option to continue the proceedings after withdrawal of the opposition does not apply in appeal proceedings (G 8/91, OJ EPO 1993, 346, point 7 of the Reasons). The Enlarged Board of Appeal concluded in G 8/93 (OJ EPO 1994, 887) that the withdrawal of the opposition by an opponent who is the sole appellant immediately and automatically terminates the appeal proceedings, even if in the board's view the requirements under the EPC for maintaining the patent are not satisfied.

In this case, the opponent was not the sole appellant, and therefore the appeal proceedings had to be continued in view of the still-pending appeal by the proprietor; however, after allowing the proprietor's appeal, taking into account the above-quoted principles established by the Enlarged Board of Appeal, the board may not assess the remaining grounds of opposition raised by the former opponents/interveners. The board's finding that the ground for opposition under Article 100(c) EPC does not preclude the maintenance of the patent as granted implies that the patent is to be maintained as granted.

Order



For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is maintained as granted.