T 1244/08 – Having Second Thoughts

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent.

After having been summoned to oral proceedings (OPs) to be held on July 7, 2011, the patent proprietor, in a letter dated April 5, 2011, declared that he had decided to abandon the patent, that he did not accept the patent as granted and did not propose any amended text, and, consequently, that there was no reason to hold OPs.

A few days later, on April 11, the patent proprietor declared that contrarily to his earlier declaration, he did not wish to abandon the patent and that, therefore, the OPs should be maintained.

During the OPs, the patent proprietor argued that the wording of his letter dated April 5 was not a withdrawal of the appeal and that it did not have an immediate legal effect. A withdrawal of an appeal had to be clearly worded as such. The declaration of April 5 did not indicate that the appeal was withdrawn. This declaration comprised four parts, i.e. (1) the declaration of the intention to abandon the patent under consideration; (2) the intention not to accept the patent as granted; (3) the intention not to amend its text; and (4) the intention to waive OPs. None of these parts qualified as a withdrawal of the appeal. As a matter of fact, the EPO was not competent for deciding on the abandonment of a patent.

According to the patent proprietor, the fact that he did not accept the patent only indicated that he did not wish to have the patent maintained as granted. The fact that he did not propose an amended text at a given stage of the proceedings did not exclude that he would do so later on. He also pointed out that waiving OPs was a mere procedural act.

Moreover, his declaration that he did not accept the patent as granted and that he did not propose an amended text required the Board to issue a decision that the patent was revoked. As long as this decision had not been issued, the patent proprietor could make up his mind. The case law based on the immediate effect of a declaration of withdrawal did not apply because the declaration of April 5 was not a withdrawal of the appeal. Decision T 73/84 had pointed out that only a revocation could ensure legal certainty and that, therefore, proceedings ought to be terminated as quickly as possible by a decision. Insofar as legal certainty could only be safeguarded after a revocation of the patent, this implied that the patent proprietor could retract as long as the Board had not issued its decision. Therefore, the patent proprietor had the right to withdraw his declaration dated April 5 and the Board had to pursue the appeal proceedings.

Well, as you might have guessed, the Board did not find these arguments persuasive:

*** Translation of the French original ***

[2] In his letter sent to the EPO on April 5, 2011, the [patent proprietor] has declared:

“the L’Oréal company having decided to abandon the above-mentioned patent, it does not accept the patent as granted and does not propose any amended text. Consequently, the OPs to be held on July 7, 2011, are not necessary any more.”

However, in his letter dated April 11, 2011, the [patent proprietor] had made the request to withdraw this declaration. The [opponents] are of the opinion that the declaration of April 5 qualifies as a declaration of withdrawal of the appeal, which is irrevocable, whereas the [patent proprietor] pleads that this letter was only a letter of intent without any immediate legal effect.

[3] All the parties admit that a declaration of withdrawal of the appeal is irrevocable and has immediate effect. Therefore, the question to be decided is whether the declaration dated April 5, 2011, qualifies as a declaration of withdrawal of the appeal which immediately puts an end to the appeal proceedings.

[4] It clearly and unambiguously follows from the wording of the declaration dated April 5, 2011, that the [patent proprietor] unrestrictedly and unreservedly renounced his patent, which had already been revoked by the OD (A 113(2)). There could not be any doubt on the intention of the [patent proprietor] expressed in his declaration, i.e. that his patent remained revoked for good and that he, therefore, showed no more interest in the appeal proceedings.

According to the established case law of the Boards of appeal (T 18/92, T 481/96, T 1003/01, T 53/03), a declaration of a patent proprietor having filed an appeal after the patent had been revoked by an OD, stating clearly and unambiguously that he was not interested any more in the pursuit of the appeal proceedings qualifies as a declaration of withdrawal of the appeal.

Consequently, the Board comes to the conclusion that the declaration dated April 5 2011 qualifies as a declaration of withdrawal of the appeal, which puts an end to the appeal proceedings with immediate effect, resulting in the decision of the OD revoking the patent becoming final (définitive). As a consequence (dès lors), a subsequent request aiming at the retraction of this declaration and the pursuit of the proceedings is inadmissible.

[5] The [patent proprietor] has pointed out that the withdrawal of the appeal had to be expressly worded as such and that nothing in the different parts of the declaration dated April 5 indicated that it was a withdrawal of the appeal.

However, the Board cannot endorse an interpretation based on splitting the declaration. A declaration makes sense only if it is taken as a whole. As a matter of fact, the declaration shows clearly and unambiguously that the [patent proprietor] was not interested in pursuing the appeal proceedings. Such a declaration leaves no doubt on the intention of the [patent proprietor] and has to be considered equivalent to a declaration of withdrawal of the appeal, regardless of the terms used.

This argument of the [patent proprietor] has to be dismissed.

[6] According to the [patent proprietor], following decision T 73/84, a declaration that [the patent proprietor would] not propose an amended text obliged the Board of appeal to issue a decision. As long as this decision had not been issued, he could most certainly retract.

However, the circumstances of the present case differ fundamentally from the circumstances of the case underlying decision T 73/84 cited by the [patent proprietor]. In the present case, the patent has already been revoked by the OD, whereas in case T 73/84 the OD had rejected the opposition and, therefore, maintained the patent as granted. In a situation where the patent is maintained by the OD, a request by the [patent proprietor] aiming at having his patent revoked cannot qualify as a withdrawal of the appeal because it would result in having the patent maintained, i.e. the opposite effect of the effect sought by the [patent proprietor]. The decision of the OD has to be set aside by a decision of revocation by the Board of appeal.

This argument of the [patent proprietor] also has to be dismissed. […]

The appeal proceedings are terminated. The patent remains revoked.

Should you wish to download the whole decision (in French), just click here.

The file wrapper can be found here.