European Patent Office: Patentees remain in control

August 24, 2017

In appeal proceedings before the EPO, patentees and applicants frequently withdraw failed requests at the end of oral proceedings. For example, if the patentee's second auxiliary request is allowed, whereas the main and first auxiliary requests are rejected, most patentees will routinely withdraw the main and first auxiliary requests. Such withdrawal may in particular be made with a view to expediting the Board of Appeals' subsequent preparation of the written decision, as no written reasoning is to be prepared in respect of withdrawn requests.

In proceedings pertaining to EPO decision T 1477/15 dated February 23 2017 (made available online on July 26 2017), the Board was prompted to consider the allowability of such withdrawal of requests. The patentee's main requests as well as the first and second auxiliary requests had been rejected during the course of the oral proceedings, whereas the third auxiliary request had succeeded. The second auxiliary request corresponded to the request held allowable by the first-instance department in the decision under appeal. At the end of the oral proceedings in appeal, the patentee withdrew the first and second auxiliary requests. The opponents took the view that they had a right to a substantiated decision on their successful appeal against the impugned decision, so the patentee had no right to withdraw the request.

Referring to Article 113(2) EPC, according to which the EPO can only decide on the text submitted by the applicant or patentee, the Board, however, held that there was no basis in the European Patent Convention for not allowing the patentee to withdraw the contested requests. The Board further noted that "it is generally accepted that in appeal proceedings the principle of party disposition applies, meaning that parties can put forward, withhold or withdraw their requests as they see fit". The Board therefore had no power to object to the patentee's withdrawal of the first and second auxiliary requests.

Applicants and patentees are thus reassured that they remain in control of the requests that will eventually be scrutinised in the appeal boards' written decisions.