6.3.4 Partial withdrawal of appeal by sole appellant and opponent

Partial withdrawal of an appeal by the sole appellant (opponent) following an allowable limitation of the patent's subject-matter under Art. 123 EPC 1973 during appeal proceedings deprived the board of its discretionary power to examine the substantive merits of the remaining, limited subject-matter. The patent had to therefore be granted in its amended form (T 6/92 and T 304/99). In T 127/05 the board recalled that an opponent who was the sole appellant had the possibility of withdrawing his appeal if he found that the outcome would be disadvantageous to himself. In G 7/91 and G 8/91 (OJ 1993, 346 and 356) the Enlarged Board of Appeal ruled that as far as the substantive issues settled by the decision at first instance were concerned, appeal proceedings were terminated when the sole appellant withdrew his appeal. It followed that an opponent who was the sole appellant could, if he so wished, force the non-appealing patent proprietor to "live with" a deficiency which he had introduced. A patent proprietor who filed an appeal could prevent himself from being placed in such a situation. The board also did not agree that decision G 1/99 (OJ 2001, 381) restricted amendment to a response to an objection first raised in appeal proceedings.

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