T 0639/23 - Lapse of patent and continuation opposition

Key points

• This decision was published in December 2025.
• The OD decdied ot maintain the patent in amended form. Both the opponent and the proprietor appealed.
• The Board, in machine translation: "By letter dated October 14, 2025, the patent proprietor withdrew his appeal and his request for oral proceedings. At the same time, he declared that the patent had lapsed in all contracting states in which it would have been effective (DE, FR, AT, IT) by declarations of renunciation." 
• "In a communication under Rule 84(1) EPC dated 3 November 2025, the Board considered the documents submitted with the letter of 31 October 2025 to be sufficient to clearly demonstrate the effective waiver in all Contracting States in which the patent was last in force. The appeal proceedings could therefore be continued at the request of the opponent, provided that such a request was filed within two months of service of this communication."
• "By letter dated 10 November 2025, the opponent requested the continuation of the appeal proceedings."
• "By letter dated 17 December 2025, the patent proprietor commented on the opponent's letter of 10 November 2025". The proprietor submitted arguments that the proceedings should be terminated without a (substantive) decision.
• "The patent proprietor contested the opponent's arguments and, in its letter of December 17, 2025, asserted that the opponent had failed to sufficiently demonstrate a concrete, seriously threatened infringement and thus a concrete interest in legal protection. "
• " According to Decision T 598/98, Guidelines 1 and 2 and Reasons 1.6 to 1.8, in addition to the (in this case disputed, see above) existence of a legitimate interest of the opponent in the retrospective revocation of the patent, the Board's discretionary decision under Rule 84(1) EPC may also take into account ...."
• I still think T 598/98 conflated German national practice with the EPC, or too readily assumed that German practice in cases of lapse of the German patent is to be applied equally under the EPC.
• I don't think Rule 84 gives a discretion to the OD if the opponent requests the continuation of the opposition procedure by the OD taking a written decision of the merits. In particular, if Rule 84 is interpreted to give the OD to discretionarily terminate the procedure against the request of the opponent (in case of a lapse), then Rule 75 EPC is meaningless ("An opposition may be filed even if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States.") Rule 84 must be interpreted (also) using the systematic method of interpretation.
• See my extensive comments on T 598/98 in this blog post.
• The Board decides to continue the procedure. "The "legal added value" of a decision on the merits, as demanded by the patent proprietor, compared to the mere discontinuation of the proceedings, is also present if the proceedings are continued, since, unlike discontinuation, the effect of a patent that is not valid is eliminated retroactively. Finally, the patent proprietor's argument that there is no concrete impact on a third party in this case is also unconvincing. Such a thing is not decisive for the continuation of the proceedings, since the objection (appeal) procedure is by its nature a review procedure for which a concrete impact on the objector or third parties is not necessary."
• The Board decides to revoke the patent.
• I don't know why the proprietor did not disapprove of the text. It could have been related to the mutual requests for a different cost apportionment (the Board refused both; not that likely, Rule 84 does not preclude a decision under Art. 104). Teva/Copaxone should also be considered, of course. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t230639du1