Introduction
The European Patent Office (EPO) has reinforced the necessity of proprietor consent in patent proceedings through the recent decision in case T 0162/22. The central point of this decision hinges on the withdrawal of approval by the patent proprietor concerning the text of the patent, leading to the revocation of the patent without further examination. This decision underscores key legal principles around patent text approval and the procedural consequences that follow from the withdrawal of such approval.
Summary of the Invention
The patent in question relates to methods for treating Irritable Bowel Syndrome (IBS) with the use of rifaximin. The invention was aimed at providing an effective treatment regimen for IBS patients, particularly focusing on improving the condition of patients with diarrhea-predominant IBS (dIBS). The use of rifaximin offered advantages such as non-absorbable antibiotic properties, which could target the gut without significant systemic absorption, reducing side effects.
Summary of the Decision
The opposition division initially revoked the patent due to non-compliance with Article 101(3)(b) EPC, which concerns the grounds for revoking a patent when an opposition is found to be valid. The patent proprietor filed an appeal against this decision. However, during the appeal proceedings, the appellant withdrew its approval for any of the texts presented, including both the granted patent and the amended versions. Despite this, the appellant explicitly stated that it did not wish to withdraw the appeal.
According to Article 113(2) EPC, the EPO can only decide on a patent based on the text submitted or approved by the proprietor. By withdrawing approval of any text, the appellant left the EPO without a valid basis to continue examining the patent. As established by EPO case law (T 73/84), when there is no approved text, the patent must be revoked.
The Board of Appeal upheld the opposition division’s decision, confirming the revocation of the patent. Since the patent proprietor refused to provide an approved text for examination, the Board could not proceed with any further substantive analysis of the patent's validity.
Lessons to be Learned
- Importance of Proprietor Consent: The decision reinforces the critical importance of patent proprietors maintaining approval of their patent text throughout the examination and appeal process. Withdrawal of such approval results in automatic revocation.
- Finality of Revocation: Once the text is withdrawn, the decision to revoke becomes final, as there is no longer a basis for the EPO to assess the patent’s merits. This decision underscores the procedural significance of Article 113(2) EPC.
- Strategy in Patent Appeals: For patent holders, it is crucial to carefully manage their procedural rights during appeals. The withdrawal of approval should be a deliberate strategy, considering its irreversible consequence of patent revocation.
- Case Law Guidance: The EPO’s adherence to established case law, particularly T 73/84 and T 1306/22, highlights the consistency and predictability of patent revocation procedures.
Legal Basis
- Article 113(2) EPC: Decisions are based on texts approved by the patent proprietor.
- Article 101(3)(b) EPC: Grounds for revocation in opposition cases.
- Case Law: T 73/84, T 1306/22.
Contact
If you have any questions concerning intellectual property issuesor need assistance with patent applications, oppositions, or appeals, please do not hesitate to contact us at Novitech IP. Our team of experienced professionals is here to provide you with expert guidance and support. Reach out to us today to discuss how we can help protect your innovations and navigate the complexities of IP law.
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.