T 0984/18 () of 2.8.2022

European Case Law Identifier: ECLI:EP:BA:2022:T098418.20220802
Date of decision: 02 August 2022
Case number: T 0984/18
Application number: 11742896.1
IPC class: A61K 31/275
A61K 38/16
A61K 38/21
A61K 31/225
A61P 25/00
Language of proceedings: EN
Distribution: D
Download and more information:
Decision text in EN (PDF, 249 KB)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Unpublished
Applicant name: Biogen MA Inc.
Opponent name: Generics (U.K.) Limited (trading as Mylan)
Hexal AG
Board: 3.3.04
Headnote: -
Relevant legal provisions:
European Patent Convention Art 113(2)
Keywords: Basis of decision - text or agreement to text withdrawn by patent proprietor


Cited decisions:
Citing decisions:

Summary of Facts and Submissions

I. This case concerns an opposition appeal.

II. The decision under appeal is the opposition division's interlocutory decision, announced on 18 January 2018 and posted on 27 February 2018, which found that European patent EP 2 533 634 (patent in suit), as amended according to the main request filed in the oral proceedings of 18 January 2018, met the requirements of the EPC.

III. Opponent 1 and opponent 2 (appellants) both filed an appeal against this decision, requesting that it be set aside and that the patent in suit be revoked.

IV. The patent proprietor (respondent) requested that the appeals be dismissed and that the patent in suit be maintained on the basis of the main request held allowable by the opposition division.

V. In addition to its main request, the respondent also re-filed former auxiliary claim requests 1 and 2 with its reply to the appellants' grounds of appeal, but it did not formulate an explicit request based on these claim sets.

VI. The board issued a summons to oral proceedings and a communication pursuant to Article 15(1) RPBA.

VII. By letter dated 18 July 2022, the respondent stated, under the heading "Withdrawal of the Patent", that it was withdrawing its approval of the text of the patent and that it expected the oral proceedings to be cancelled.

VIII. The board subsequently cancelled the oral proceedings.

Reasons for the Decision

1. The appeals comply with Articles 106 to 108 EPC and Rule 99 EPC; they are admissible.

2. Article 113(2) EPC requires that the EPO may decide upon a European patent only in the text submitted to it, or agreed, by the proprietor of the patent.

3. In its letter of 18 July 2022, the respondent refers only in general terms to its approval of the text "of the [...] patent", without mentioning specific claim requests. However, the heading "Withdrawal of the Patent" leaves no doubt that the withdrawal of approval of any version was intended.

4. As a consequence, there is no valid text on the basis of which the board can consider the appeals.

5. In the circumstances described above, it is established case law that the appeal proceedings must be terminated by a decision ordering the revocation of the patent without going into the substantive issues (see, for instance, T 0073/84, OJ EPO 1985, 241; T 0507/00; T 0655/01; T 1655/07; and T 0545/10).


For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

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