Thursday, 24 October 2013

T 1518/11 – Too Late

In this examination appeal the appellant withdrew the appeal … too late.

[2.1] After the board had announced its decision to dismiss the appeal against the refusal of the application in suit and closed the oral proceedings (OPs), the appellant stated by letter dated 23 August 2013 that the appeal was withdrawn. However, since the decision had been announced at the OPs held on 13 August 2013 and thereby became effective on that day, the appeal proceedings are terminated (T 843/91 [10]). Given that by virtue of the board’s decision the refusal became final and no appeal lies from decisions of the boards, the appellants submission made after the announcement of the board’s decision is without any legal effect.

[2.2] Furthermore, a statement of withdrawal of appeal made by the (sole) appellant after the final decision of the board has been announced at OPs does not relieve the board of its duty to issue and notify to the appellant the decision in writing setting out the reasons for the decision (T 1033/04 [3]).

The booklet “Overview of the appeal proceedings according to the EPC” by Meinders, Beckedorf and Weiss – which I find very useful – has an interesting passage on withdrawals in the course of appeal proceedings (p. 48):
“… Another situation which may make withdrawing the appeal an interesting option for an appealing applicant/patent proprietor is when the Board has issued a summons with a preliminary opinion making clear that the appeal has little chance of success. If they are the sole appellant, withdrawing the appeal at that stage will lead to immediate termination of the appeal proceedings (except where a decision on the apportionment of costs in opposition-appeal proceedings is necessary), with no written reasoned decision being issued. Thus, negative effects elsewhere for family members of the application or patent may be avoided. This is the principle of party disposition in appeal, i.e. the party determines whether, what and to what extent it is appealed and how the appeal proceedings are pursued.

Such a situation may even arise as late as at oral proceedings before the Board. However, in that case the withdrawal of the appeal must take place before the Board has announced the decision. In written proceedings, such a withdrawal has to take place before the Board has delivered its decision to the internal post, i.e. the party should enquire with the Registry of the Board about the status of the case.” (my emphasis)
Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Anonymous said...

What can be the interest of the appelant to withdraw its appeal in such a case, where the examining division has refused the patent application and the BoA intends to dismiss the appeal (let's assume that the BoA has not announced its deicsion yet) ?

Manolis said...

In examination, however this is possible. It happened to me that two days after a refusal was announced in the OPs, the applicant withdrew the application.
According to EPO's legal division, this is possible since, according to G1/09, the application remains pending until the time limit for filing an appeal expires.
As to the question raised in the first posting, who knows what the applicant thought? May be it was considered to be too negative to have a decision by the Board confirming the decision of the examining division...;-)

Anonymous said...

I would assume the benefit would be to prevent the written decision being used as ammunition in litigation on related cases, or even by examiners on divisionals.

Myshkin said...

So did the withdrawal after the oral refusal result in the written decision never being issued?

In that case I don't think I can agree with the Legal Division on this. The decision takes effect with its oral announcement. In my view a later (attempted) withdrawal does not invalidate the oral decision and the Division has no choice but to issue the written decision. The application is still pending at least for the purpose of R. 36(1), but that does not mean it was not refused. Clearly it was refused.

I can accept though that a refused application which is still pending can be withdrawn, but then the withdrawal should only affect the "pending" state of the refused application: the refused application stops being pending, no divisional can be filed anymore and the refusal becomes final (i.e. no appeal possible).

The fact that an appeal is not possible anymore is not a reason for not issuing the written decision. The Boards issue written decisions all the time for applications that have been finally refused during OP.

Anonymous said...

The written decision is just the reasoning behind whatever decision was taken. The decision was announced at the OP and is valid. Its validity does not depend on the issue of the reasons. The decision is also stated in the minutes. So IMO, yes, it is possible to withdraw a refused decision in the appeal period, but that does not mean that minutes and reasons of the decision taken at OP should not be issued anymore. They are in fact part of the OP, one might say, and finalize it.

Anonymous said...

In the case of a patent being maintained in amended form by the oppo div and only the proprietor appeals, it is not possible to revoke the patent. But the reasons for the board not to allow a broader patent than maintained by the oppo div may be so damning for the remaining claims (it may eg become clear that the patent should have been revoked), which reasons may become clear during OP before the board, that the proprietor does not want to see them in writing. The only way to prevent that is to withdraw the appeal. I have seen that more often. Also I have seen such a decision issued from which it became very clear that the reasoning against the actual claims could also be applied to the claims as maintained, which were untouchable.