T 0237/86 - Abandonment of patent in appeal - #69

Citation rank: 69
No. of citations: 72

T 237/86 deals with the question of how a patent proprietor can properly request the revocation of his patent in opposition appeal proceedings. The difficulty had been that abandonment of the patent was not expressly foreseen in the then current EPC1973, and is still not expressly mentioned in e.g. Art. 101 EPC (which only mentions the possibility of revoking the patent for the case that it does not meet the requirements of the  EPC).

At the time of T 237/86 it had already been common practice that a proprietor, who wished his patent to be revoked in opposition(-appeal) proceedings, withdrew his approval of the text of the patent. The patent was then revoked in view of Art. 113(2) EPC, which requires that the proprietor agrees to any text upheld by the opposition division. Alternatively, it was accepted that the patent proprietor directly requests revocation of his patent.

In T 237/86 the proprietor stated in writing: "We herewith abandon the above patent". The Registrar of the Board was of the opinion that abandonment of the patent in the course of opposition-appeal proceedings was not possible and he invited the proprietor to either withdraw his consent to the text of the patent upheld by the opposition division, or to request revocation of the patent, which the opponent did. The Registrar cited T 73/84, which states that "the patent proprietor cannot terminate the (opposition) proceedings by telling the EPO that he is surrendering the European patent, since this is not provided for in the Convention".

The Board in T 237/86, upon reviewing the communication of the Registrar found that a direct request for revocation sufficed, whatever the form of the words, when it was made clear to the boards that appellant and respondent agreed that the patent should be revoked. They said:

"When, as in the present case, it is made quite clear to the Board of Appeal (whatever the exact form of wording used) that both the Appellant and the Respondent are agreed that the patent should be revoked, the Board sees no difficulty in exercising its powers under Article 111(1) EPC, by deciding to revoke the patent." (point 2 of the reasons)

"Abandonment of the patent" was thus to be interpreted as a request to revoke the patent.

T 237/86 is most often cited for holding that an opposition division or Board can/must revoke the patent as soon as it is clear that the proprietor wishes the patent to be revoked. A statement to that effect must be considered equivalent to a request that the patent be revoked (see, e.g., T 626/86).

The issue of requesting revocation in opposition or appeal proceedings was devoted a chapter in the EPO's Case Law Book (chapter IV.C.5.2).

---

Headnote:

When it is made clear to the Board of Appeal, whatever the form of words used, that the Appellant and the Respondent are agreed that a patent should be revoked, the Board may exercise its power under Article 111(1) EPC to revoke the patent. The statement "We herewith abandon the above patent" sent to the Board of Appeal by the patent proprietor during the appeal stage of an opposition, is in this case equivalent to a request that the patent be revoked.

The full text of the decision can be found here.