| European Case Law Identifier: | ECLI:EP:BA:2024:T016222.20241009 | ||||||||
|---|---|---|---|---|---|---|---|---|---|
| Date of decision: | 09 October 2024 | ||||||||
| Case number: | T 0162/22 | ||||||||
| Application number: | 09715020.5 | ||||||||
| IPC class: | A61K 31/437 A61P 31/00 |
||||||||
| Language of proceedings: | EN | ||||||||
| Distribution: | D | ||||||||
| Download and more information: |
|
||||||||
| Title of application: | METHODS FOR TREATING IRRITABLE BOWEL SYNDROME | ||||||||
| Applicant name: | Salix Pharmaceuticals, Inc. | ||||||||
| Opponent name: | Sandoz GmbH Kraus & Lederer PartGmbB Teva Pharmaceutical Industries Ltd. |
||||||||
| Board: | 3.3.07 | ||||||||
| Headnote: | - | ||||||||
| Relevant legal provisions: |
|
||||||||
| Keywords: | Basis of decision - text or agreement to text withdrawn by patent proprietor | ||||||||
| Catchwords: |
- |
||||||||
| Cited decisions: |
|
||||||||
| Citing decisions: |
|
||||||||
Summary of Facts and Submissions
I. The decision under appeal is the opposition division's decision revoking European patent No. 2 252 148.
II. The patent proprietor (appellant) filed an appeal against this decision. With the statement of grounds of appeal, the appellant filed three sets of claims as its main request and auxiliary requests 1 and 2.
III. In their replies to the statement of grounds of appeal, opponents 1 to 3 (respondents 1 to 3, respectively), requested that the appeal be dismissed.
IV. The Board scheduled oral proceedings, in line with the parties' requests, and issued a communication with its preliminary opinion on the case.
V. Oral proceedings were held before the Board. At the end of the oral proceedings, the appellant declared that it no longer approved the text of the patent as granted and withdrew all pending claim requests. The appellant stated explicitly that it did not withdraw the appeal.
Reasons for the Decision
1. Under Article 113(2) EPC, the European Patent Office shall decide upon the European patent only in the text submitted to it, or agreed, by its proprietor.
2. By disapproving the text of the granted patent and withdrawing all amended text versions submitted to the EPO, the patent proprietor withdrew its approval of any text for maintenance of the patent. Therefore, there is no approved text of the patent on the basis of which the Board can decide on the appeal.
3. In these circumstances, it is established case law that the patent must be revoked without further substantive examination as to patentability (see decision T 73/84, OJ EPO 1985, 241 and Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, section IV.D.2). However, as the patent had already been revoked by the opposition division, the Board's order cannot be a new revocation of the patent (see Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, III.B.3.3). Nor can the appellant's withdrawal of its approval of any text for maintaining the patent be interpreted as a withdrawal of the appeal, since that possibility was expressly excluded by the appellant. Therefore, in line with decision T 1306/22, the order must be a dismissal of the appeal, making the decision to revoke the patent final.
Order
For these reasons it is decided that:
The appeal is dismissed.
