The idea of withdrawing the wrong application will send a shiver down the spine of most patent attorneys. The present appeal - against the revocation of the opposed patent - presents us with a misguided withdrawal and adds a flower to the big bouquet of case law on withdrawals of withdrawals.
Having received the patent proprietor’s statement of grounds of appeal the registry of the Board forwarded it to the two opponents on March 19, 2012. This communication stated that “Any reply must be filed within four months of this notification”.
In a letter received on March 28, 2012, the patent proprietor made the following declaration:
In a further letter, received on April 5, 2012, the patent proprietor explained that there had been an error:
Obviously, the opponents objected to the withdrawal being ignored.
In what follows, the Board tries to sort out this delicate situation. There are interesting bits and pieces all over the decision, so I decided to report it in full.
The cancellation of the first time limit for responding
to the statement of grounds of appeal, R 100(2)
to the statement of grounds of appeal, R 100(2)
[1.1.1] The four month time limit for opponents 1 and 2 to reply to the statement of grounds of appeal would normally have expired on 30 July 2012. Under Article 12(5) RPBA […], extension of time limits may exceptionally be allowed in the board’s discretion following receipt of a written and reasoned request.
[1.1.2] In the letter received on 8 May 2012 opponent 1 requested an indication by the board of whether the appeal was seen as not withdrawn well before the end of the time limit for responding to the statement of grounds of appeal and, if so, to set a new time limit.
[1.1.3] In the annex to the summons to oral proceedings (OPs), dated 6 June 2012, the board expressed the provisional view that under the circumstances, and particularly in the light of decision T 18/92, there was at least prima facie uncertainty as to whether the appeal procedure has been terminated by the [patent proprietor’s] declaration in the letter of 28 March 2012. These circumstances were regarded by the board as exceptional in the meaning of Article 12(5) RPBA. In the board’s view it would have been unfair and contrary to the principle of procedural economy to have expected opponents 1 and 2 to reply to the statement of grounds of appeal whilst there was at least prima facie uncertainty as to whether appeal proceedings were still pending. The board consequently cancelled the time limit for responding to the statement of grounds of appeal.
The holding of separate OPs solely on the question
of whether the appeal had been withdrawn
of whether the appeal had been withdrawn
[1.2.1] Such separate OPs were specifically requested by opponent 1, while the proprietor requested that they not occur and that all issues be dealt with in a single OPs.
[1.2.2] In view of the present case load of the board, it is unlikely that this case would reach the front of the queue for substantive examination by the board, A 110, within the next three years, no party to the proceedings having made a request for accelerated processing of this case before the boards of appeal; see OJ EPO 2008, 220.
[1.2.3] If the board had allowed the proprietor’s request, uncertainty might have remained for at least the next three years as to whether appeal proceedings were still pending in this case. The board regarded such a scenario as unacceptable for the parties to the proceedings, in particular opponents 1 and 2, and third parties and consequently allowed opponent 1’s request.
The request to change the date of the OPs
[1.3.1] In the letter received on 12 June 2012 the proprietor requested that the date of the OPs, arranged for 16 October 2012, be changed as the representative was also the only person working on another case in which OPs were to be held on 17 October 2012 before the German Federal Patent Court. A preparatory meeting with the parties in that case was already planned for 16 October 2012. In a letter received on 18 June 2012 opponent 1 requested inter alia that the date of the OPs not be changed.
[1.3.2] According to point 2.3 of the Notice of the Vice-President of DG3 of the European Patent Office dated 16 July 2007 concerning OPs before the boards of appeal of the EPO (OJ EPO 2007, Special edition No. 3, 115), “Every request for fixing another date for OPs should contain a statement why another representative within the meaning of A 133(3) or A 134 cannot substitute the representative prevented from attending the OPs.”
[1.3.3] In the present case the board found that the argument by the proprietor’s representative that he was the only person working on the present file (and a case before the Bundespatentgericht) was insufficient to demonstrate that no other representative could deal with this matter before the EPO, particularly because, as stated in the annex to the summons to OPs, the OPs did not relate to substantive matters, but rather to the procedural question of whether the appeal procedure has been terminated by the letter of 28 March 2012. To argue this issue alone it would not be necessary to have any knowledge of the substance of the case.
[1.3.4] The board consequently decided to allow opponent 1’s request not to change the date of the OPs.
The new time limit for responding to the statement of grounds of appeal, R 100(2)
[1.4.1] As explained below, the board concludes that the proprietor’s declaration in the letter of 28 March 2012 did not terminate these appeal proceedings, meaning that appeal proceedings are still pending in this case. Hence, following opponent 1’s request, at the end of the OPs the board set a new four month time limit for opponents 1 and 2 to reply to the statement of grounds of appeal, starting the day after the OPs, i.e. on 17 October 2012. The time limit was notified to all parties in the OPs to minimize the delay in the proceedings.
The proprietor’s letter received on 28 March 2012
[2.1] It is common ground between the proprietor and opponent 1, and the board agrees, that the letter contains some details which fit the present proceedings and other details which do not. Those details which fit are the proprietor’s own reference for this case (RA 942-04EP), a “number” the same as the publication number in this case (1 640 847) and the name of the applicant (RAMBUS INC.). The details in the letter which do not fit are two references to “the application” (instead of the patent), two references to “the applicant” (instead of the proprietor) and “the current examination proceedings” (instead of the current appeal proceedings). The letter also mentions “objections raised” during the current proceedings, although no objections had been raised by the board.
[2.2] The proprietor and opponent 1 differ as to what the consequences of these discrepancies should be. According to the proprietor, the letter of 28 March 2012 must be taken at “face value”, leading to the conclusion that it was intended to relate to another file and thus has no effect in this case. According to opponent 1, the letter of 28 March 2012 must be assumed to relate to these proceedings and construed as a declaration that the proprietor is no longer interested in maintenance of the patent, which, in turn, should be construed in the light of the case law as a withdrawal of the appeal, taking immediate effect and being irrevocable, since it has been announced to the public via the online European Patent Register.
[2.3] As a preliminary point, the board considers that the fact that EPC 2000 introduced a revocation procedure, A 105a-c, is irrelevant to the present case. Such revocation procedure is explicitly excluded while opposition proceedings are pending (A 105a(2)) and there is nothing in the letter of 28 March 2012 which would give anyone the impression that it was an (incorrect) attempt to invoke this article. It would be known to an interested third party that a proprietor who had lost interest in the patent would have available only the same mechanisms for terminating the procedure as before the introduction of EPC 2000, namely either simply withdrawing the appeal (since the patent was revoked by the opposition division) or withdrawing consent to the text of the patent in accordance with A 113(2).
[2.4] The board takes the view that, as argued by the [patent proprietor], it is established case law that a renunciation of a patent must be unambiguous and free from doubt before it may be acted upon by a division or board (see for example T 386/01, cited by the [patent proprietor]). The board considers that the same must be true of a declaration that an appeal is withdrawn. As noted above it is common ground that the letter contains some details which fit the present proceedings and other details which do not. According to opponent 1, the details in the letter which fit the present case, i.e. the minority of the details, are assumed to reflect the author’s true intention, whilst the details which do not fit, i.e. the majority of the details, are seen as not reflecting the author’s intention and thus requiring interpretation. The board finds that this is not a reasonable approach, since it in effect requires that the board ignore the fact that there are details not fitting the present proceedings. The board finds in fact the opposite approach to be more reasonable, namely that it is likely that the majority of the details in the letter reflect the author’s true intention, namely to withdraw a European patent application in a different case. At any rate the board considers that the request is clearly not unambiguous and free from doubt. Had the [patent proprietor] not sent the second letter of 5 April 2012 it would therefore have been incumbent on the board to enquire as to the true intention of the [patent proprietor] before taking any action, whether that would have been in the form of a decision or simply closing the procedure. Which of these two options would have been the correct one is, in the circumstances, irrelevant. The board concludes that the intention of the author of the letter of 28 March 2012 was to withdraw a European patent application in a different case, so that the letter has no effect in this case. The reasoning in the decisions relied upon by opponent 1 and mentioned in the first question for referral to the Enlarged Board of Appeal (EBA), namely T 68/90, T 264/84, T 415/87, T 347/90, T 18/92 and T 481/96 […], does not cause the board to change its assessment of the facts in this case. It is true that in some cases cited by the opponent a statement that the proprietor wishes to “withdraw the application” has been taken as a renunciation of a patent. However this does not contradict the principle that the request must be unambiguous and doubt free. It is clear that this depends on the facts of the individual case. In some of these cases (T 347/90, T 68/90, T 481/96) it is evident from the decision that there were other, clear, indications that the patent “application” referred to was indeed meant to refer to the patent which was the subject of the proceedings. In at least one case, T 481/96, the board nonetheless checked the request with the proprietor. In two cases, T 264/84 and T 415/87, there is no discussion of any surrounding facts. In these cases there is certainly no indication that the board in fact had any doubts as to the proprietor’s intention, nor that it would have issued its decision had it had any such doubts.
[2.5] This evaluation of the letter of 28 March 2012 also applies to third parties reading the letter in the online “all documents” part of the European Patent Register. Third parties would also have concluded that the author of the letter of 28 March 2012 had at least possibly intended to withdraw a European patent application in a different case. Thus the third party would also have appreciated that there was not an unambiguous and doubt-free request.
[2.6] It follows from the above that the board does not accept opponent 1’s argument that the letter must be construed as a withdrawal of the appeal in this case.
[2.7] With respect to the online publication of this letter, the board notes as a preliminary that it is not convinced by opponent 1’s argument that decisions T 18/92 and T 481/96 support the hypothesis that the withdrawal of a European patent application in opposition appeal proceedings is equivalent to the withdrawal of the appeal by the proprietor. On the contrary, these decisions state that, under circumstances where the first instance decision had been to revoke the patent, a request for revocation of the patent had the same effect as the withdrawal of the appeal. In contrast to the situation had the appeal really been withdrawn however, the appeal proceedings did not end as soon as the request for revocation of the patent was made. Instead, the board issued a decision. In T 18/92 the proprietor requested that the patent be revoked. The board informed the proprietor in writing that the request had the same effect as a withdrawal of the appeal; see reasons, point . The board thereupon issued a decision stating that the patent remained revoked. In case T 481/96 the proprietor declared that the application was withdrawn. The board in question explained to the proprietor in writing that the board interpreted the request as a request for revocation of the patent, whereupon the proprietor made a request for revocation of the patent. The reasons for the decision cite T 18/92 and state that the request for revocation of the patent had the same effect as the withdrawal of the appeal. The board decided that the patent remained revoked according to the decision of the first instance. The fact that a request for revocation of the patent had the same effect as the withdrawal of the appeal in these cases stems largely from the nature of the appealed decision. Had the appealed decision been to reject the opposition(s), then these two requests would have had different effects: revocation of the patent, on the one hand, and maintenance of the patent, on the other.
[2.8] Further with respect to the publication of the letter, under A 127 and R 143(n), withdrawals of European patent applications are announced in the form of an entry or “mention” in the European Patent Register, which is publicly available online. This information is also published in the European Patent Bulletin, which is also publicly available online. In the present case, no such announcement was made by the EPO in either the European Patent Register or the European Patent Bulletin. Hence it is not the case that the EPO has publicly announced an official interpretation of the letter of 28 March 2012 which might have led third parties to another conclusion regarding the effect of the letter of 28 March 2012.
In decision J 25/03, which was relied upon by opponent 1 and is referred to in the third question to be referred to the EBA, a withdrawal of an application had been notified to the public in the form of a mention in the online European Patent Register. For this reason a request for retraction of a letter of withdrawal of the application was not allowed. Since in the present case however the letter of 28 March 2012 is not understood as applying to this case and because no such mention of withdrawal of the application appeared in the European Patent Register or European Patent Bulletin, this decision does not change the board’s assessment of the facts in the present case.
The proprietor’s subsequent letter received on 5 April 2012
[3.1] It is established EPO practice that requests by parties which are unclear or ambiguous are queried by the EPO with the party to establish the true intention of the party concerned. In the present case, no such query by the EPO was necessary, since the proprietor soon sent a further letter, received on 5 April 2012, clarifying the intention of the submission received on 28 March 2012, namely that the letter of 28 March 2012 had been intended to relate to another case which was still in the examination phase. With the letter received on 5 April 2012 the proprietor filed a corrected withdrawal of the other patent application (No. 07 114 628.6). Whilst actions by the author of the letter of 28 March 2012, subsequent to its receipt by the EPO, have not been taken into account by the board in determining the legal effect of said letter, the board notes that the author’s subsequent actions at least do not contradict the board’s understanding of the letter of 28 March 2012.
The questions to be referred to the EBA
[4.1] The questions, formulated by opponent 1 in German (see the minutes of the OPs), are understood by the Board to be as follows in English:
1. How is the interpretation that the patent proprietor’s submission of 28 March 2012 is not a declaration that the patent proprietor is no longer interested in the maintenance of the patent in suit consistent with the six decisions cited in point 3.3 of the annex to the summons to OPs?2. Following the submission of 28 March 2012 and its publication in the online European Patent Register, can the subsequent submission of 5 April 2012 still be considered?3. If the answer to question 2 is yes, how is this consistent with decision J 25/03?
[4.2] According to A 112 (1),(1)(a) EPC 1973, in order to ensure uniform application of the law, or if an important point of law arises, the board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required for the above purposes. If the board of appeal rejects the request, it shall give the reasons in its final decision.
[4.3] In the present case, question 1 relates to a question of fact, namely the board’s understanding of the letter of 28 March 2012, rather than a question of law. Answers to questions 2 and 3 are not considered to be required (see point [4.2]) for a decision in the present case, since the intention of the author of the letter of 28 March 2012 has been determined on the basis of the information given in that letter alone, and no official interpretation of the letter was published by the EPO in either the European Patent Register or the European Patent Bulletin. Hence none of the questions complies with A 112 EPC 1973.
The remaining requests by opponent 1
 Opponent 1’s last two auxiliary requests, namely that the appeal be dismissed or (further) OPs be appointed and a four month time-limit for a reply to the grounds of appeal be set require that the technical issues raised in the statement of grounds of appeal also be considered. Since the OPs of 16 October 2012 were solely to discuss whether the letter of 28 March 2012 had terminated the appeal proceedings and opponents 1 and 2 have not yet responded to the statement of grounds of appeal, the board has not been able to decide on these requests in the present interlocutory decision.
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.