| European Case Law Identifier: | ECLI:EP:BA:2020:T231218.20200720 | ||||||||
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| Date of decision: | 20 July 2020 | ||||||||
| Case number: | T 2312/18 | ||||||||
| Application number: | 07774640.2 | ||||||||
| IPC class: | C07D471/10 A61K31/438 A61P1/08 |
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| Language of proceedings: | EN | ||||||||
| Distribution: | D | ||||||||
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| Title of application: | HYDROCHLORIDE SALT OF 8-[{1-(3,5-BIS-(TRIFLUOROMETHYL) PHENYL) -ETHOXY}-METHYL]-8-PHENYL-1,7-DIAZA-SPIRO[4.5]DECAN-2-ONE AND PREPARATION PROCESS THEREFOR | ||||||||
| Applicant name: | OPKO Health, Inc. | ||||||||
| Opponent name: | Teva Pharmaceutical Industries Ltd | ||||||||
| Board: | 3.3.02 | ||||||||
| Headnote: | - | ||||||||
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| Keywords: | Basis of decision - text or agreement to text withdrawn by patent proprietor Basis of decision - patent revoked |
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| Catchwords: |
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Summary of Facts and Submissions
I. The opposition division with its decision found that European Patent 2 004 646 as granted met the requirements of the European Patent Convention, and rejected the opposition.
II. The opponent (appellant) filed an appeal against this decision, requesting revocation of the patent in its entirety.
III. In response to a communication of the board requesting clarification, the respondent (patent proprietor), with the letter of 3 June 2020, stated that it no longer approved of the text in which the patent was granted. Auxiliary requests 1, 2 and 3 were withdrawn. The respondent furthermore stated that it understood the effect of those actions would be the revocation of the patent.
Reasons for the Decision
1. Under Article 113(2) EPC, the European Patent Office shall consider and decide upon the European patent only in the text submitted to it, or agreed, by the proprietor of the patent. This principle must also be observed in opposition and opposition appeal proceedings.
2. The respondent, by withdrawing approval of the text of the granted patent, indicating that it would not be submitting an amended text, and expecting the patent to be revoked, has thereby withdrawn its approval of any text for maintenance of the patent. Since the text of the patent is at the disposition of the patent proprietor, a patent cannot be maintained against the patent proprietor's will. There is therefore no text on the basis of which the board can maintain the patent.
3. In view of the above, the board concludes that the patent must be revoked as envisaged in Article 101 EPC and as expected by the respondent. This conclusion is also in line with established case law following decision T 73/84, OJ 1985, 241 (see e.g. T 655/11 of 11 November 2005; T 220/12 of 22 June 2015; T 381/12 of 3 January 2018; T 2680/17 of 2 April 2019).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
