T 0459/88 (Admissible) of 13.2.1989

Summary of Facts and Submissions

I. Notice of opposition was filed in due form against European patent No. 58 774 by two opponents. In a decision under Article 102(3) EPC dated 13 July 1988 the Opposition Division decided to maintain the patent in amended form.

II. On 9 September 1988 one of the two opponents filed an appeal, paid the fee for appeal and requested that the patent be revoked. On 3 October 1988 the respondents announced that "the patent would be withdrawn" and, by fax dated 28 October 1988, subsequently confirmed in writing, requested that the patent be revoked. In reply to a communication from the registrar of the Boards of Appeal dated 14 November 1988 the appellants submitted a statement of grounds of appeal in which they cited as sole ground of appeal the respondents' request of 28 October 1988 that the patent be revoked.

Reasons for the Decision

1. In the case of the present appeal the Board first has to consider whether it is admissible, i.e. in particular whether the letter received from the appellants on 19 November 1988, in which they give as their reason for requesting revocation of the patent the fact that the patent proprietors requested that it be revoked, contains a written statement of grounds within the meaning of Article 108, third sentence, EPC. The Board of Appeal is competent to examine and decide on the appeal under Articles 110(1) and 111(1) EPC only if it is admissible.

2. Earlier Board of Appeal decisions have discussed the implications of this requirement of Article 108 EPC. Decision J 22/86 "Disapproval/MEDICAL BIOLOGICAL" (OJ EPO 1987, 280) in particular pointed out that this is not merely a formal requirement "but involves a presentation of the appellant's case" in a "statement which sets out the substance" of that case. It pointed out furthermore that the admissibility aspect "can only be decided in the context of that particular case" (see Reasons for the Decision, No. 2). In Decisions T 220/83 "Grounds for appeal/HÜLS" (OJ EPO 1986, 249) and T 213/85 "Grounds for appeal II/FISCHER" (OJ EPO 1987, 482) the Board furthermore ruled that in compliance with this requirement [the appellants] "must state in their grounds the legal or factual reasons why the contested decision should be set aside". In the last two instances the applicants had claimed in their appeals that the contested decisions were faulty in substance and the Board held that they had failed to state the legal or factual reasons for that claim.

3. The situation is different where the circumstances change after the department of first instance has given its decision, as exemplified by Decision T 105/87 "Inland Steel" dated 25 February 1988 (unpublished). In this case the appellants, in their statement of grounds of appeal, had not contested the substance of the decision of the department of first instance but had conceded that it was correct and had accordingly filed amended sets of claims which were intended to take due account of that decision. In response to the respondents' submission the Board commented:

"There is nothing in the wording of [Article 106 to 108 and Rule 64 EPC] supporting the idea that the task of a Board of Appeal should be strictly limited to [considering] whether or not the decision of the first instance is correct on the basis only of facts and arguments presented before that instance ... Nor is there anywhere else in the EPC any support for this idea. On the contrary, it is clearly foreseen that, depending on the particular circumstances of each individual case, new facts and arguments may be presented in the appeal proceedings and considered by the Board of Appeal subject to the provisions of Article 114(2) EPC ...".

4. The present case is a further example of circumstances changing after the department of first instance has taken its decision. Here the change consists in the fact that the respondents (patent proprietors) requested that their patent be revoked after notice of appeal had been filed. In case T 186/84 (OJ EPO 1986, 79) the Board of Appeal decided that the request made by a patent proprietor during the appeal stage of opposition proceedings that his patent be revoked is equivalent to withdrawal of his agreement - required for the purposes of Article 113(2) EPC - to the text of the patent as granted and that on this basis the patent must be revoked without examination of the substantive grounds for opposition. In case T 237/86 (OJ EPO 1988, 261) the Board decided that it may exercise its power under Article 111(1) EPC by deciding to revoke the patent when it is made quite clear to the Board during the appeal stage of an opposition (for example in the form of a statement from the patent proprietor explicitly requesting that his patent be revoked or some other wording having the same effect) that both the patent proprietor and the opponent are agreed that the patent should be revoked. Since that decision was given the Boards of Appeal have decided in a number of cases to revoke patents under Article 111(1) EPC at the request of their proprietors.

5. In view of the above-mentioned decisions the Board considers that the appellants' letter received on 19 November 1988 (see point 1 above) contains a valid ground enabling it under Article 111(1) EPC to set aside the contested decision and revoke the patent. If, in proceedings before the EPO, the patent proprietor himself requests that his patent be revoked, there can scarcely be any more cogent reason for revoking it since it cannot be in the public interest to maintain a patent against its proprietor's will. Given this change in the situation after the contested decision was taken and brought about by the respondents' request for revocation of their patent, the Board considers it would be completely superfluous for the statement of grounds of appeal to refer to circumstances other than the fact that the respondents themselves requested the revocation. In the opinion of the Board the requirements of Articles 106 to 108 and Rule 64 EPC are thus met and the appeal is therefore admissible.

6. The Board holds that the fundamental role of the EPO in opposition proceedings is to settle disputes between the parties. In the present case, following filing of the notice of appeal, the respondents and the appellants are now agreed that the patent should be revoked; there is therefore no longer any difference of opinion between them. Therefore, in the exercise of its powers under Article 111(1) EPC and having regard also to the considerations in point 5 above, the Board has decided to revoke the patent.

ORDER

For these reasons, it is decided that:

1. The decision of the Opposition Division dated 13 July 1988 is set aside.

2. European patent No. 58 774 is revoked.