EPO appeal case T 943/22 clarifies procedural limitations in EPO Appeals following opponent withdrawal

Case Law | 28.01.2025

In T943/22, the EPO Boards of Appeal has clarified the scope of appeal review in cases where all opponents withdraw their oppositions during proceedings. This is an interesting case in which HOFFMANN EITLE Partner Roland Schieren represented patentee. It is noteworthy as it highlights that when no active opposition remains, the Board may limit its review to those grounds of opposition specifically raised in the appeal or by the opposition division. 

In the first instance before the Opposition Division (OD), the patentee’s main request (claims as granted) was found to add matter, while an auxiliary request was maintained. The proprietor appealed the decision, seeking reinstatement of the main request. By the end of the appeal proceedings, however, all opponents had withdrawn their oppositions. 

During the oral proceedings, the proprietor convinced the Board that the main request did not add matter. However, the procedural question then arose: could the Board examine other grounds of opposition raised earlier by the opponents, given their withdrawal? 

The Board deliberated on this question explaining that after the opponent withdrew its opposition and appeal, the proprietor became the sole party in the opposition and appeal proceedings. While Rule 84(2) EPC allows the EPO to continue opposition proceedings after an opposition is withdrawn, this does not apply to appeal proceedings, as clarified by G 8/91 and G 8/93. According to these decisions, the withdrawal of opposition by the sole appellant automatically ends the appeal. 

In this case, however, the opponent was not the sole appellant, and the appeal continued due to the proprietor’s still-pending appeal. After allowing the proprietor's appeal, the Board applied the principles outlined in the G-decisions above to conclude that it could not assess the remaining grounds of opposition raised by former opponents or interveners. This will be good news for sole appellant patentees who may otherwise be concerned that the Board may continue to examine grounds of opposition even after withdrawal of the oppositions. 

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