| European Case Law Identifier: | ECLI:EP:BA:2024:T204422.20241011 | ||||||||
|---|---|---|---|---|---|---|---|---|---|
| Date of decision: | 11 October 2024 | ||||||||
| Case number: | T 2044/22 | ||||||||
| Application number: | 11840796.4 | ||||||||
| IPC class: | C12Q 1/68 C07H 21/04 A61K 48/00 C12N 15/113 |
||||||||
| Language of proceedings: | EN | ||||||||
| Distribution: | D | ||||||||
| Download and more information: |
|
||||||||
| Title of application: | Modulation of alpha synuclein expression | ||||||||
| Applicant name: | Ionis Pharmaceuticals, Inc. | ||||||||
| Opponent name: | Hoffmann Eitle Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB | ||||||||
| Board: | 3.3.08 | ||||||||
| Headnote: | - | ||||||||
| Relevant legal provisions: |
|
||||||||
| Keywords: | Basis of decision - text or agreement to text withdrawn by patent proprietor Basis of decision - patent revoked |
||||||||
| Catchwords: |
- |
||||||||
| Cited decisions: |
|
||||||||
| Citing decisions: |
|
||||||||
Summary of Facts and Submissions
I. The appeals lodged by the patent proprietor (appellant I) and the opponent (appellant II) lie from the interlocutory decision of the opposition division that European patent No. 2 640 853 granted on European patent application No. 11840796.4, which was filed as an international application under the PCT and published as WO 2012/068405 (application as filed) with the set of claims of auxiliary request 1 (filed as the thirty-ninth auxiliary request with the submission of 1 September 2021) and the invention to which it relates met the requirements of the EPC.
II. Each party replied to the appeal of the other and subsequently filed rejoinders.
III. Appellant II requested that the decision under appeal be set aside and the patent be revoked.
IV. The parties were summoned to oral proceedings and the board expressed its preliminary opinion on some matters concerning the appeals in a communication under Article 15(1) RPBA.
V. With a letter dated 10 October 2024 the patent proprietor informed the board as follows:
"The Proprietors hereby withdraw their approval under Rule 71 EPC of the text in which European Patent No. 2640853 was granted. The Proprietors will not be filing a replacement text. For the avoidance of doubt, the Proprietors also withdraw all requests pending in the appeal proceedings.
In the absence of a text agreed by the Proprietors, the opposition proceedings relating to this patent are terminated following Article 113(2) EPC, and the patent must be revoked. In such situations, the proceedings are terminated by a decision ordering the revocation of the patent without reference to any of the substantive issues (for example, see decision T 73/84 and Case Law of the Boards of Appeal of the EPO, 10th edition 2022, section IV.D.2)."
VI. The board cancelled oral proceedings.
Reasons for the Decision
1. Pursuant to the principle of party disposition established by Article 113(2) EPC, the EPO will examine, and decide upon, the European patent only in the text submitted to it, or agreed by the patent proprietor.
2. Such an agreement cannot be deemed to exist if the patent proprietor, as in the present case, expressly withdraws the consent to the text of the patent in the form as granted and withdraws all auxiliary requests on file (see section V.).
3. There is therefore no text of the patent on the basis of which the board can consider the appeals. In these circumstances, as there is no approved text, the patent is to be revoked without assessing issues relating to patentability (see e.g. decisions T 73/84 (OJ EPO 1985, 241) and T 186/84, (OJ EPO 1986, 79) and Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, sections III.B.3.3 and IV.D.2). The board sees no reason to deviate from this consistent approach of the Boards of Appeal, with the consequence that the patent is to be revoked.
4. Revocation of the patent complies with the request of appellant II. The present decision can therefore be taken without holding oral proceedings (Article 116(1) EPC and Article 12(8) RPBA 2020).
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
