G 0008/91 - Withdrawal of the appeal - #52

Citation rank: 52
No. of citations: 88

G 7/91 and G 8/91, in consolidated proceedings, looked  at the consequences of the withdrawal of the sole appeal (or of all appeals) in the ongoing appeal proceedings.

In the underlying opposition case T 357/89 the European patent had been maintained in amended form. The sole opponent appealed against this decision, requesting that it be set aside and the patent revoked. The respondents (patent proprietors) reacted by filing new claims. The appellant then withdrew its appeal.

The referring Technical Board in T 357/89 thought that a decision of the Enlarged Board was required as to whether appeal proceedings can be continued, if the sole appeal (or all appeals) have been withdraw.

That question had not yet been clarified by case law. Prior to G 8/91, Board members usually would merely note the fact that the appeal has been withdrawn, and the parties are informed by the Registry that the appeal proceedings have been terminated accordingly. Special forms were available for such situations (EPO Forms 3312, 3347, 3348).This practice was now under review.

The Enlarged Board generally considered that it was undesirable to change long-standing practices in the proceedings before the EPO, for reasons of continuity (point 4 of the reasons).

The existing practice was also in line with the principle of party disposition, according to which a public authority or a court normally may not continue proceedings if the procedural act which gave rise to the proceedings (such as the filing of an appeal) has been retracted (point 5 of the reasons).

The Enlarged Board further considered Rule 60(2) EPC1973 (now R. 84 EPC), according to which opposition proceedings can be continued in case of legal incapacity or death of the opponent. This, however, was seen as an exception.

Also the principle of ex officio examination (Art. 114 EPC) was looked at. A situation was envisaged, in which the appeal was withdrawn, and a Board of Appeals had to "stand by and watch" while the "flawed" decision (i.e., a "flawed patent") entered into force because of the withdrawal. The question arose of whether, in such cases, the public must be protected. The Enlarged Board of Appeals, however, found that the public interest (against "flawed" patents) was adequately served by the principle that any person is free to file an opposition against such patents (point 10.1 of the reasons).

In summary, the Enlarged Board saw no convincing reasons for abandoning or changing the then current practice of the Boards of Appeal according to which, in as far as the substantive issues of the appeal are concerned, the appeal proceedings are terminated by virtue of the withdrawal of the sole appellant's appeal, whether in ex parte or in inter partes proceedings. Hence, the Enlaged Board decided in favour of that current practice.

It decided that, in so far as the substantive issues settled by the contested decision at first instance are concerned, appeal proceedings are terminated, in ex parte and inter partes proceedings alike, when the sole appellant withdraws the appeal

Remark: G 8/93 later looked at the situation where the opponent and sole appellant withdraws his opposition during appeal proceedings. Also in this case the appeal proceedings are automatically terminated, with not possibility for the Board to continue. G 8/93 did not make it into the top-100 of most cited Boards of Appeal decisions. The text of G 8/93, however, can be found here.

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Headnote:

In so far as the substantive issues settled by the contested decision at first instance are concerned, appeal proceedings are terminated, in ex parte and inter partes proceedings alike, when the sole appellant withdraws the appeal.

The full text of the decision can be found here.