T 2710/19 (Formulations of Pomalidomide / CELGENE) 09-03-2022
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FORMULATIONS OF 4-AMINO-2-(2,6-DIOXOPIPERIDINE-3-YL)ISOINDOLINE-1,3-DIONE
Teva Pharmaceutical Industries Ltd.
Generics [UK] Ltd
HGF Limited
STADA Arzneimittel AG
Hoffmann Eitle
Basis of decision - text or agreement to text withdrawn by patent proprietor
Basis of decision - patent revoked
I. European patent No. 2 391 355 (the patent) was granted on the basis of a set of 15 claims.
II. The patent was opposed under Article 100 (a), (b) and (c) EPC, on the grounds that the subject-matter of the patent lacked novelty and inventive step, it was not sufficiently disclosed and it extended beyond the content of the application as filed.
III. The present appeal by opponent O5 (the appellant) lies from the decision of the opposition division finding that the patent in amended form met the requirements of the EPC. Opponent O2 also lodged an appeal against the decision of the opposition division, but subsequently withdrew its opposition and its appeal.
IV. By letter dated 4 March 2022, the patent proprietor (the respondent) stated that it withdrew its approval of the text in which the patent was granted, as well as all requests on file, and that no replacement text would be submitted. The respondent mentioned that it understood that the consequence would be revocation of the patent.
Pursuant to Article 113(2) EPC, the European Patent Office shall decide upon the European patent only in the text submitted to it, or agreed, by the proprietor of the patent.
Such agreement is not deemed to exist if the patent proprietor, as in the present case, has expressly stated that it disapproved the text of the granted patent and stated that it would not submit an amended text.
There is therefore no text on the basis of which the board can maintain the patent. In these circumstances, the proceedings are to be terminated by a decision ordering revocation of the patent, without examination as to patentability.
Since the Board can grant the appellant's and respondent's request to revoke the patent, the oral proceedings were cancelled and the decision can be taken in written proceedings.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.