T 0186/84 - Request for revocation by proprietor - #42

Citation rank: 42
No. of citations: 104

T 186/84 is concerned with the question of how a request by the patent proprietor for revocation of his patent is to be handled in opposition proceedings.

In the underlying case, the opponents appealed against a decision of the Opposition Division to reject the opposition. They requested that the patent be revoked. With letter of 5 June 1985 the patent proprietor then likewise requested revocation of the patent.

The Board first considered, whether a request of the proprietor for revocation of his own patent is admissible. In this regard, the Board noted:

"In the course of opposition proceedings before the EPO the need arose for the proprietors to have their patent set aside with retroactive effect. The European Patent Office accordingly sought a legal means whereby the proprietors could be divested retroactively of their European patent in opposition proceedings and adopted that set out in Legal Advice No. 11/82 (OJ EPO 2/1982, p. 57), whereby a European patent is revoked, without any further examination as to patentability, if the proprietor states that he no longer approves the text in which the patent was granted and does not submit an amended text." (point 2 of the reasons)

In other words, disapproving of the text in which the patent was granted is the appropriate way of "divesting retroactively" of one's own patent. No further examination as to patentability of the claimed invention is to take place in such cases.

In the present case, however, the proprietor did not withdraw its approval to the granted text, but instead requested revocation of his patent directly. Revocation of a patent was not foreseen in Art. 102 EPC1973 (now Art. 101(2) EPC). Therefore, the Board had to interpret the proprietor's request. The Board stated:

"In the present case the proprietors have applied for the patent to be revoked. It is beyond doubt that in so doing they are seeking revocation within the meaning of Article 102(1) [EPC1973, now Art. 101(2) EPC] and with the consequences specified in Article 68 EPC, namely the cancelling of the effects of the European patent application and the resulting patent as from the outset. Although the request for revocation differs as to form, it is in substance the same as stating disapproval of a given text of the claims, since it has the same aim; the present request may therefore be regarded as a withdrawal of agreement to the text of the patent as granted." (point 4 of the reasons)

The Board hence considered that the proprietor's request for revocation of the patent must be interpreted/handled in the same manner as a withdrawal of the approval of the granted text. Without an agreed-upon (by proprietor) text of the patent being available, a substantive examination of the patentability requirements for the claims at issue was not only superfluous, but in fact impossible.

The patent was thus revoked.

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Headword:

If in opposition proceedings the proprietor of a patent requests that his patent be revoked, it is to be revoked without substantive examination of the impediments to patentability. This principle is consonant with Legal Advice from the EPO No. 11/82, OJ EPO 2/1982, p. 57 and Decision T 73/84, OJ EPO 8/1985, p. 241.

The full text of the decision can be found here.

See T 73/84 for the same issue in appeal proceedings.