The present decision also deals with a not so common request: the opponent requested that the patent proprietor not be allowed to withdraw auxiliary requests considered during oral proceedings (OPs) and that the Board express its opinion on these requests.
[30] Proceedings before the Boards of Appeal are governed by the principle of party disposition under which a public authority or 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not continue proceedings if the procedural act which gave rise to the proceedings (such as the filing of an appeal) has been retracted, unless procedural laws specifically permit continuation (G 8/91 [5]). Such exceptions are set forth, in particular, in R 70(1) (no withdrawal of the request for examination) and in R 84(2) (possible continuation of opposition proceedings after withdrawal of the opposition). There is no similar exception that would allow the continuation of the appeal proceedings with respect to claim requests withdrawn in appeal proceedings.
The principle of party disposition is of particular relevance for inter partes proceedings (see, e.g., T 240/01 [6]). It means, for example, that a department of the EPO is not allowed to decide on a non-pending application (T 1409/05 [3.2.26]). The Boards of Appeal do not intervene of their own motion, but only at the request of the appellants (T 60/91 [9.3]). Referring to the principle of party disposition, the Enlarged Board of Appeal confirmed that the appeal proceedings are terminated after the appeal is withdrawn in so far as the substantive issues are concerned (G 8/91 [4,5], see also decision G 2/91 [6.1]). This applies also in cases where a third party who intervened during appeal proceedings is interested in the continuation of the proceedings (G 3/04 [10]). The principle of party disposition (in German “Verfügungsgrundsatz” or “Dispositionsmaxime”) also allows that the patent proprietor changes the order of auxiliary claim requests or introduces new claim requests and thereby avoids that certain requests are examined. Such changes of the order of auxiliary requests were made – and were not contested – during the OPs in the present case.
[31] Not only an appeal in its entirety but also part of an appeal can be withdrawn if the appeal could initially have been accordingly limited in conformity with R 99(1)(c) and R 99(2) (see J 19/82 [4]). In the present case, [the patent proprietor] could have refrained from filing the auxiliary requests in question. Consequently, [the patent proprietor] should be allowed to withdraw individual auxiliary requests filed in the course of the appeal proceedings. For the Board, it is not relevant whether the Board has discussed the relevant requests with the parties and/or whether the Board has given its opinion on such requests as long as the debate has not been closed in accordance with Article 15(5) of the Rules of Procedure of the Board of Appeal (RPBA) and no decision has been announced (see below point (35)). Opinions given by the Board in appeal proceedings regularly trigger the filing of new requests, the admissibility of which will then be examined under Article 13 RPBA. Likewise, the withdrawal of requests – which normally does not raise any issues under Article 13 RPBA – must be possible as a reaction to an opinion given by the Board.
[32] In the Board’s view, it does not matter whether [the patent proprietor] filed the auxiliary requests in question as appellant or as respondent to the appeal filed by [the opponent]. In inter partes proceedings, the principle of party disposition applies to the procedural acts of both parties (see also T 240/01 [6]).
[33] Under A 113(2), the EPO shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. This provision not only specifies an aspect of the right to be heard; it is also relevant in the context of party disposition. It has been concluded from A 113(2) that a Board of Appeal has no authority to order the grant of a patent containing claims which are different from those submitted by the applicant (T 32/84 [19]). The principle that a patent may not be granted or maintained with claims to which the proprietor has never consented or to which the consent has been withdrawn applies to all procedural situations. If the patent proprietor in appeal proceedings withdraws its approval of the text of the patent as granted and declares that he will not be submitting an amended text, the appeal proceedings have to be terminated and the patent has to be revoked without any substantive examination (T 73/84 [3,5]). Accordingly, the withdrawal of the approval with respect to individual claim sets (filed as auxiliary requests) must result in the termination of the proceedings with respect to such claim sets. [The patent proprietor], by withdrawing his requests, withdrew his consent to the respective claim wording. In this context, any decision of the Board on the allowability of requests withdrawn by the patent proprietor would be completely pointless since a withdrawn request could never form the basis of a maintained patent.
[34] The principle of party disposition (which implies the right to withdraw an appeal in its entirety or in part) and the provision of A 113(2) imply, in the Board’s judgment, that [the patent proprietor], being the patent proprietor, must have the right to withdraw any of its claim requests filed in the course of appeals proceedings.
[35] A withdrawal of an appeal cannot have any effect on the decision if the appeal is withdrawn after the decision has been announced by the Board at OPs in accordance with R 111(1) (see T 1033/04 [3]). E contrario, an appeal may be withdrawn at any time before the decision is announced. When [the patent proprietor] withdrew part of its requests during the OPs, no formal decision had been announced yet on these requests. This fact was pointed out by the chair – and was not disputed – when the request was discussed. [The patent proprietor] was therefore allowed to withdraw part of its auxiliary requests in view of the status of the proceedings. The Board has to reject the request of [the opponent] that the withdrawal of claim requests of [the patent proprietor] considered during OPs shall not be allowed.
[36] If [the patent proprietor] is allowed to withdraw auxiliary requests before a final decision is taken, there is no room for any opinion or reasoning given by the Board on such withdrawn requests in the written decision. In view of R 111(1), decisions need to be given and reasoned only on admissible requests which are pending after the debate is closed.
[37] Any opinion or reasoning given by the Board on claim requests withdrawn during the proceedings would, in effect, constitute declaratory judgments or obiter dicta (i.e., findings which do not support the formula of the decision, see T 473/98). There is no basis in the EPC for any declaratory judgment. [The opponent] may therefore not request any formal decision on any claims which are not part of a pending request.
The Board agrees with [the opponent] that the Board may give comments or obiter dicta on points which need not to be decided in order to arrive at the final decision. The Board would not exclude that such obiter dicta may even comment on claims which do not form part of a pending request. However, it lies within the discretion of the Board to include or not to include such obiter dicta in the written decision. Any interest of [the opponent] in such obiter dicta which may arise in the course of pending or future application, opposition, infringement or invalidity proceedings cannot justify that obiter dicta (which may not have any relevance for any proceedings on the present patent before the EPO) are included in the final decision of the present proceedings. Even if a divisional application contains claims identical to claims forming part of withdrawn requests in the present proceedings, such claims in a divisional application could not be accepted or rejected on the basis of res iudicata if they were commented only in obiter dicta in the present proceedings.
Likewise, the Board does not accept the position of [the opponent] that the public interest would require the requested opinions on withdrawn claim requests. Third parties may not claim any right to learn about the Board’s opinion on claims that are not part of a pending request.
[38] For these reasons, the request that the Board expresses its opinion on withdrawn auxiliary requests has to be rejected.
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