| European Case Law Identifier: | ECLI:EP:BA:2024:T050923.20241211 | ||||||||
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| Date of decision: | 11 December 2024 | ||||||||
| Case number: | T 0509/23 | ||||||||
| Application number: | 17200764.3 | ||||||||
| IPC class: | A61K 31/19 A61K 31/196 A61P 11/00 A61P 25/20 A61P 43/00 A61K 31/00 A61K 33/00 A61K 31/20 A61K 31/33 A61K 31/505 A61K 31/55 A61K 31/616 |
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| Language of proceedings: | EN | ||||||||
| Distribution: | D | ||||||||
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| Title of application: | Administration of Gamma Hydroxybutyrate with Monocarboxylate Transporters | ||||||||
| Applicant name: | Jazz Pharmaceuticals Ireland Limited | ||||||||
| Opponent name: | Hoffmann Eitle Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB Zentiva, k.s. Hexal AG Ter Meer Steinmeister & Partner Patentanwälte mbB |
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| Board: | 3.3.04 | ||||||||
| Headnote: | - | ||||||||
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| Keywords: | Basis of decision - text or agreement to text withdrawn by patent proprietor | ||||||||
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Summary of Facts and Submissions
I. Appeals were duly lodged by the patent proprietor (appellant I), opponent 1 (appellant II) and opponent 2 (appellant III) against the opposition division's decision taken in relation to the patent in suit. The opposition division held that the ground for opposition under Article 100(b) EPC prejudiced the maintenance of the patent in suit, that the invention defined in the claims of auxiliary requests 1 and 2 was not sufficiently disclosed and that the patent as amended in the version of auxiliary request 3, and the invention to which it related, met the requirements of the EPC.
II. With the reply to the other parties' appeals, appellant I requested that the decision under appeal be set aside and the patent be maintained as granted, implying that the oppositions be rejected, or alternatively, that the patent be maintained in amended version on the basis of one of the sets of claims of auxiliary requests 1 to 29.
III. Appellants II and III requested that the decision under appeal be set aside and the patent be revoked. Opponents 3 and 4, parties as of right to these appeal proceedings, did not make any submissions.
IV. In accordance with their requests, the parties were summoned to oral proceedings before the board.
V. By letter dated 1 November 2024 appellant I withdrew its appeal and all requests on file, and stated that it no longer approved the text upon which the patent had been granted. It further informed the board that no further text forming the basis of an amended version of the patent would be submitted.
VI. Oral proceedings were cancelled.
Reasons for the Decision
1. The appeals comply with Articles 106 to 108 EPC and Rule 99 EPC. They are admissible.
2. Pursuant to Article 113(2) EPC the EPO may decide upon a European patent only in the text submitted to it, or agreed, by the proprietor of the patent.
3. As appellant I withdrew its approval of any text for the maintenance of the patent in suit, there is no text on the basis of which the board can consider compliance with the requirements of the EPC.
4. In such circumstances, in accordance with established case law, the appeal proceedings must be terminated by a decision ordering the revocation of the patent without going into the substantive issues (see also T 73/84, OJ EPO 1985, 241).
5. Furthermore, there are no other issues to decide upon within the scope of the appeal. As appellant II's and appellant III's requests for revocation of the patent can be allowed, the decision can be taken in written proceedings.
6. Moreover, as appellant I withdrew its appeal after a date for oral proceedings was set and within one month of notification of the board's communication pursuant to Article 15(1) RPBA, appellant I's appeal fee is to be reimbursed at 50% in accordance with Rule 103(3)(a) EPC.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
3. Appellant I's appeal fee is reimbursed at 50%.
