In the present case the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.
In its response to the statement of grounds of appeal, the patent proprietor stated:
“The above-mentioned European patent is herewith withdrawn.”
[1] The respondent, i.e. the patent proprietor declared that it withdraws the patent at issue. In other words, it appears to request the withdrawal of the patent.
However, “withdrawal” of a patent on request of (or even by) the patent proprietor is not as such foreseen in the procedure according to the EPC.
[2] The boards have followed two different ways of dealing with requests by patent proprietors for withdrawal of their patent […].
Either such a request is interpreted as expressing disagreement with the text of the patent (see for example decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, second paragraph and also decisions T 904/05, T 535/00, T 348/00).
Or such a request is interpreted as the patent proprietor's agreement with the opponent's request for revocation of the patent (see for example decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, fourth paragraph and also T 820/94 [6]).
[3] The respondent explains in its letter of 24 March 2011 that it agrees with the text in which the patent was granted, but that it is no longer interested in the maintenance of the patent and therefore will refrain from taking further actions to maintain the patent […].
[4] Given that these statements are in reaction to the board's communication, the board interprets the respondent's request for withdrawal of the patent therefore as a request for revocation of the patent […].
5. Hence, both the appellant and the respondent request that the decision of the OD be set aside and that the patent be revoked.
[6] The parties’ requests are granted.
[7] According to the case law (see for example decisions cited in the Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII. C.6.1.2, third paragraph) the present decision can be given without substantive examination as to patentability and thus also without detailed reasons.
[8] Moreover, the board could take the decision in the written proceedings since it follows the appellant's main request and the respondent has made no request for oral proceedings. […]
The patent is revoked.
I wonder what the Board would have done if the opposition had been limited to some of the claims. Interpret the withdrawal as an agreement to limit the patent to the claims that had not been attacked? Or as a request for (complete) revocation? But normally such a request is not free of charge ...
Perhaps the best way out would be to ask the patent proprietor to state that after all it did not agree with the text.
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1 comments:
The Board already asked the proprietor once whether he meant that he did no longer agree with the text, or whether he meant to request revocation.
The proprietor's answer was clear: he still agreed with the text, and he would refrain from taking further actions to maintain the patent.
I'd say the proprietor neither "no longer agreed", nor requested revocation. It seems to me that the Board should have looked at the case substantively. If the appellant's case was plausible, revoke. If not, dismiss the appeal.
The original request to withdraw the patent can/must be ignored for lack of a legal basis.
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