EP 3 545 259 B1 relates to “Methods and apparatus for examining rotationally symmetric test objects”, actually a test system for section-by-section interferometric testing of tyres.
Brief outline of the case
Filing date 08.02.2019
Priority date 18.02.2018 DE 102018001255
Presentation by the applicant/proprietor, Bernward Mähner, “Tire Contour Detector (TCD) For a self-adjusting shearographic tire tester”, at the Tire Technology Expo on 16.02.2016 (BM1)
The OD decided that claim 1 as granted lacked N over the presentation BM1.
The OD maintained the patent according to AR6.
Proprietor and opponent appealed.
In a letter dated 14.10.2025, the proprietor withdrew his appeal and his request for OP. At the same time, he declared that the patent had expired in all contracting states in which it would have last been effective (DE, FR, AT, IT) by means of declarations of renunciation.
In a letter dated 10.11.2025, the opponent requested that the appeal proceedings be continued.
Contrary to the OD’s decision, the patent as maintained lacked N over BM1.
Further AR were not admitted under Art 12(3+5) RPBA for lack of substantiation.
The patent was thus revoked by the board.
Proprietor and opponent also requested a different apportionment of costs in its respective favour.
In this blog entry we will only deal with the continuation of the procedure.
The opponent’s point of view on the continuation of the procedure
The opponent requested the continuation of the appeal proceedings within the prescribed period. It stated that the opponent’s business area affected by the patent had been sold during the course of the opposition proceedings and that any rights arising from the patent for the past could continue to exist vis-à-vis the purchaser.
In order to avoid any recourse claims by the purchaser, the opponent therefore continued to have a legal interest in the continuation of the appeal proceedings.
The proprietor’s point of view on the continuation of the proceedings
The patent proprietor opposed the opponent’s arguments and asserted, that the opponent had not sufficiently demonstrated a concrete, serious threat of infringement and thus a concrete interest in legal protection.
It also denied that there had been a transfer of business operations or an economically relevant part of the business to third parties (Italmatic s.r.l., to which individual patents of Carl Zeiss Optotechnik GmbH had been transferred, might be considered) that affected the technical or economic subject matter of the patent. The formal transfer of the opponent’s position from Carl Zeiss Optotechnik GmbH to Carl Zeiss Industrielle Messtechnik GmbH was strong evidence that no third party was affected by the patent.
The proprietor argued in this regard that T 598/98, dated from 2001 and had been issued in a procedural context that had since undergone significant developments.
For the proprietor, the general interest in a decision on the merits referred to in T 598/98 must be interpreted restrictively. In the present case, there is no apparent concrete legal added value of a decision on the merits over the mere discontinuation of the proceedings, since, in particular, there is no concrete involvement of a third party.
The board’s decision on the continuation of the proceedings
According to, T 598/98, Catchword 1 and 2 and reasons 1.6 to 1.8, in addition to the existence of an interest on the part of the opponent in obtaining legal protection through retroactive revocation of the patent, a continuing general interest in a decision on the merits may also be taken into account as a further element that may play a role in the board’s decision.
This applies in particular if, as in the present case, the matter is essentially ready for decision at the time of the abandonment and, also with regard to the validity of the patent, it makes a difference in the outcome whether a decision on the merits is taken or the proceedings are merely discontinued.
The arguments brought forward by the proprietor do not justify merely discontinuing the proceedings. The appeal proceedings already had the character of an appeal at the time of decision T 598/98, since the relevant provisions in Art 21, 23, 106 to 111 have not changed.
Furthermore, the legal nature of the present appeal proceedings is still preserved, since, on the basis of the opponent’s appeal, the contested decision will be reviewed for its validity if the proceedings are continued, in accordance with the purpose of the appeal proceedings.
The “legal added value” of a substantive decision as opposed to the mere discontinuation of proceedings, as requested by the proprietor, is also given if the proceedings are continued, since, in contrast to a discontinuation of proceedings, the effect of a patent that is not valid is removed ex tunc in the event of revocation.
Finally, the proprietor’s argument that there is no specific impact on a third party in the present case is also unconvincing. This is not decisive for the continuation of the proceedings, since the opposition appeal proceedings are, by their nature, review proceedings for which it is not necessary for the opponent or third parties to be specifically affected.
Comments
At the end of the day, the applicant/proprietor acted against its own interests by publishing document BM1. It might well be that the ED, even in knowledge of the document would nevertheless have granted a patent in following the applicant’s interpretation of document BM1.
However, the OD and the board were clearly of the opinion that the publication BM1 was not only detrimental to the N of the patent as granted, but also to the patent as maintained.
A general interest in a decision on the merits, rather than a mere discontinuation of the appeal gives legal certainty, even if the patent might have lapsed in the countries it was valid until its lapse. If the patent is revoked, it never had any effect.
By the same token, the EPO may continue the opposition procedure when the opposition is withdrawn.
Contrary to actions before civil courts, there is no legitimate interest to be declared when filing an opposition.
The inventor/applicant/proprietor appears to be a natural person. He was most probably not aware of the pitfalls of an early disclosure of major parts of what later became the subject-matter of an application/patent.
It is interesting to note that the Register of commerce show that in the company “ISYM Informations- und Systemtechnik GmbH”, as of 26.05.2018, the sole managing director is Mr Mähner, Bernward, the present inventor/applicant/proprietor.
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