| European Case Law Identifier: | ECLI:EP:BA:2024:T265922.20241010 | ||||||||
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| Date of decision: | 10 October 2024 | ||||||||
| Case number: | T 2659/22 | ||||||||
| Application number: | 17196350.7 | ||||||||
| IPC class: | C07K 1/00 C07K 14/00 |
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| Language of proceedings: | EN | ||||||||
| Distribution: | D | ||||||||
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| Title of application: | Prevention of disulfide bond reduction during recombinant production of polypeptides | ||||||||
| Applicant name: | Genentech, Inc. | ||||||||
| Opponent name: | Hexal AG | ||||||||
| Board: | 3.3.04 | ||||||||
| 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| Keywords: | Basis of decision - text or agreement to text withdrawn by patent proprietor Basis of decision - patent revoked |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 appeal lodged by the opponent (appellant) lies from the decision of the opposition division to reject the opposition against European patent No. 3 327 026.
II. The patent was opposed under Article 100(a) EPC on the grounds of lack of inventive step (Article 56 EPC) and under Article 100(b) and (c) EPC.
III. With their statement of grounds of appeal, the appellant requested to set the decision aside and to revoke the patent.
IV. In its reply to the statement of grounds of appeal the patent proprietor (respondent) requested to dismiss the appeal, i.e. to maintain the patent as granted, or alternatively to maintain the patent in amended form based on the set of claims of auxiliary requests 1 to 12 filed therewith.
V. Both parties requested oral proceedings as an auxiliary measure.
VI. The board appointed oral proceedings, as requested by the parties.
VII. In a letter dated 10 October 2024, the respondent declared as follows:
"The proprietor hereby withdraws its approval of the text of the patent in any form and withdraws
all requests pending in the appeal proceedings."
VIII. The board then cancelled the oral proceedings.
Reasons for the Decision
1. Pursuant to the principle of party disposition established by Article 113(2) EPC, the EPO shall examine, and decide upon, the European patent only in the text submitted to it, or agreed, by the proprietor of the patent.
2. Such an agreement cannot be deemed to exist if the patent proprietor - as in the present case - expressly declares that it withdraws its approval of the text of the patent in any form and withdraws all requests pending in the appeal proceedings (see section VII.).
3. There is therefore no text of the patent on the basis of which the board can consider the appeal. In these circumstances, the patent is to be revoked, without assessing issues relating 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, IV.D.2).
4. Revocation of the patent is also the main request of the opponent (see section III.). There are also no remaining issues that need to be dealt with by the board in the present appeal case. The decision in the present appeal case can therefore be taken without holding oral proceedings.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
