Key points
- The patentee withdrawals its appeal during the oral proceedings before the Board.
- ". The Board is mindful of the fact that in certain circumstances, the withdrawal of an appeal can be considered abusive, namely in the context of several (pending) divisional applications where the withdrawal of an application or appeal is meant to avoid legal certainty, see e.g. the decision of the District Court Munich of 24 February 2020 (7 O 1456/20), headnote 1: "A patentee that on the basis of a parent application has branched off several, mostly identical divisional applications, acts contrary to honest practices when by voluntarily dropping the patent right prior to a decision of the opposition division, avoids a decision of the Boards of Appeal for a parallel divisional patent that could clarify the legal situation for the whole field of the invention". Further such practices are highlighted by K. Foss-Solbrekk, "The Divisional Game: Using Procedural Rights to Impede Generic/Biosimilar Market Entry", 53 IIC 1007-1037 (2022)."
- As a comment, "considered abusive" may also be interpreted in connection with national law and EU competition law.
- "for the case at issue, the board remarks that it is established case law that an appellant has the right, based on the principle of party's disposition, to withdraw its appeal at any time and that the use of a right does not in principle constitute an abuse (see for example decision T 0674/03). Moreover, there is in the Board's view insufficient evidence that the withdrawal of the appeal was part of a systematic approach by the appellant to avoid clarifying the issues of patentability by way of a written decision on such issues. The board thus concludes for the above reasons that the respondent's request for apportionment of costs is not justified and that any party has to bear the costs it has incurred."
- The case was about bendable glass.
- As a comment, during the oral proceedings, the Board announced a conclusion that AR 68 (!) did not meet the requirements of Article 83 and that this issue appeared to apply to all other requests on file. Had the Board announced this finding directly as a decision, the Board would be obliged to issue the written decision.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/08/t-063521-divisional-game-at-epo.html
