CASELAW-UPC – reviews of UPC decisions

T 419/21 – Conditional withdrawal of an appeal

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EP 3 288 141 relates to an automated battery storage system and power plant for the generation of electric power, stabilisation of the grid and provision of reserve energy.  

Brief outline of the case

The applicant appealed the decision of the ED refusing the application for infringement of Art 123(2).

The ED pointed out to the applicant that the 6th renewal fee had not been paid but still could be paid with a surcharge up to 31.01.2023.

In a finding of loss of rights under R 112(1) EPC, the ED pointed out to the applicant that the European patent application was deemed to be withdrawn under Art 86(1) due to the non-payment of the 6th annual fee and of the additional fee

The case is interesting as it relates to the conditional withdrawal of the appeal.

The applicant’s withdrawal

On 31.01. 2023, the applicant declared the withdrawal of the appeal with the following condition:

  • “…on behalf of the appellant applicant, the present appeal T0419/21- 3.5.02 is withdrawn unless
  • the renewal fee for the sixth (6th) year (= EPO fee code 036) and
  • the additional fee to the renewal fee for the sixth (6th) year (= EPO fee code 096) have been validly paid.”

The applicant’s point of view

The applicant argued, that procedural declarations could be made on the understanding that certain conditions were fulfilled as long as proceedings were already pending. To this effect, the applicant cited a series oof decisions of the boards.

Although a need for protection for third parties must be recognised in principle, this is less pronounced in unilateral proceedings than in bilateral proceedings, as there is no granted property right here yet, but only a patent application.

Furthermore, in the present case, the conditional withdrawal of the appeal was deliberately declared on the last day of the six-month grace period pursuant to R 51 at 23:59. Since the declaration could not have been visible in the EPO register at the earliest, until one day, it was effectively ruled out that any legal uncertainty and thus a need for protection for third parties could have arisen.

Even if no clear payment instruction is given to the authorised representative, it is possible that fees are paid by the applicant himself or by third parties without this coming to the knowledge of the authorised representative.

The board’s decision

For the board, it appears questionable whether a procedural act that terminates proceedings, such as the withdrawal of an appeal, can be made subject to a condition at all, if this initially leaves open whether the appeal proceedings can be continued.

It is generally recognised that procedural declarations on which the initiation or continuation of proceedings depends may not, in the interests of legal certainty, be made subject to conditions if this would leave open whether the EPO can continue the proceedings on the basis of this declaration. To this effect the board cited a number of decisions and dismissed the decisions cited by the applicant.

Moreover, the purpose of withdrawing an appeal is to terminate the appeal proceedings immediately and without further examination by the board.

In return, the appellant is refunded the appeal fee paid in whole or in part under R 103. It would run counter to this if, on the basis of the conditional declaration, the board first had to examine whether the factual or legal circumstances relevant for a conditional declaration of withdrawal have occurred.

In the case of the payment of fees by third parties, the applicant has no interest worthy of protection in this respect, since the payment of fees is originally the responsibility of the applicant.

If the applicant fails to arrange for corresponding payments in due time, himself or through his representatives, he can either rely on payments by third parties or withdraw his appeal unconditionally and unambiguously in order to be reimbursed the appeal fee. However, there is no recognisable legitimate interest in keeping both options open to the applicant.

The board also noted that, after receiving a communication of loss of rights under R 112(1), an applicant also has the option of filing a re-establishment of rights under Art 122 EPC or a request under Art 7(3) and (4) Rules relating to Fees.

The decision on such a request would also not fall within the original competence of the board dealing with an appeal against the refusal of an application.

Due to the legal options available to an applicant after receipt of the communication of loss, it would therefore not be possible for the board to decide at the time of filing the declaration of conditional withdrawal of appeal whether the condition has been met.

This applies to the applicant appeal proceedings as well as to opposition appeal proceedings, which is why – contrary to the opinion of the applicant – different treatment is not justified.

In unilateral and bilateral appeal proceedings, the purpose of a withdrawal of appeal is to end the proceedings directly and unambiguously, without further examination by the board.

It would run counter to this if the withdrawal of the appeal were to depend on legal or factual circumstances outside the appeal proceedings which do not fall within the board’s original area of competence or responsibility in the pending appeal proceedings and on which a decision must first be taken by another organ of the EPO.


The key message to be retained is that a conditional withdrawal of the appeal is ineffective if it does not allow the board to immediately terminate the appeal proceedings.

If the appellant still has options open, allowing him to continue the proceedings, independently from the current appeal proceedings, then the board cannot decide immediately to terminate the appeal proceedings without further action.  

The reimbursement of the appeal fee is only possible if the board can immediately terminate the proceedings.  

In the present case, and in spite of the non-timely payment of the renewal fees and the additional fee, the applicant still had options allowing him to continue the procedure, even if this was, in view of the circumstances, rather unlikely.

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2 replies on “T 419/21 – Conditional withdrawal of an appeal”

Extraneous Attorneysays:

That was a creative conditional withdrawal, to be sure. It is not terribly surprising that the Board declined to go along with it.


@ Extraneous Attorney,

The creativity of some representatives is sometimes astonishing.

In the present case, the representative wanted to be sure that the annual fee had not been paid, for instance by a third party, but at the same time wanted that part of the appeal fee could be reimbursed.

A reimbursement of part of an appel fee is however only possible if the board can close the appeal procedure without having to do any work from the moment of filing of the withdrawal. This was certainly not the case here.

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