Friday, 16 October 2009

T 1496/06 - Conditional Withdrawal ? Nope.

The title of this post is misleading insofar as the EPO (and the WIPO, for that matter) does accept withdrawals (of applications) that are conditioned upon non publication. See for example the Guidelines A-VI 1.2 where it is stated that the applicant “may make [the withdrawal] subject to the provisio that the content of the application is not made known to the public.” The present decision deals with another (admittedly rather exotic) situation : the conditional withdrawal of a published application during appeal proceedings following a rejection.

In a fax dated 26 June 2009 the appellant withdrew the application on the condition that any fee was refunded, explicitly setting out that, if no refund was possible, the application was not withdrawn. [IX]

[…] The appellant’s initial request was that the decision be set aside in appeal proceedings and a patent be granted. According to the principle of party disposition this request determines the extent of the appeal proceedings (see G 9/92, [1,3,9]). [2.1]

On the other hand, the appellant’s conditional withdrawal of the application, if legally effective, means that the appellant now requests that “any fee is refunded” with the immediate termination of the appeal proceedings without examination of the appeal, which is the consequence of a withdrawal of the application in appeal proceedings in accordance with established case law. The conditional withdrawal in effect thus aims at an alternative to the examination of the appeal provided for in A 110 EPC and A 111(1) EPC 1973 so that it remains open whether the appellant requests that the board decide on the appeal or not. [2.2]

Consequently the conditional withdrawal of the application aims at extending the appeal to subject-matter which has no basis in the EPC and is contrary to the principle of party disposition. Thus it is inadmissible in the appeal proceedings and does not have any legal effect (see T 9/04). [2.3]

To read the whole decision, click here.