T 0073/84 - Revocation by the patent proprietor - #20

Citation rank: 20
No. of citations: 162

It is not foreseen in opposition and opposition-appeals procedures that the patentee requests revocation of his own patent. For example, such an outcome is not among the possible outcomes of an opposition division listed in Art. 101(2) and (3). The possibility for the proprietor of a European patent to request revocation of its own patent was only added to the EPC2000 through the limitation or revocation procedure according to Art. 105a-105c.

In the opposition case underlying T 73/84, the Opposition Division had rejected the opposition and the patent was maintained unamended. The opponent appealed against this decision. At that stage, the patent proprietor referred to Legal Advice No. 11/82 (OJ (EPO) 2/1982, p. 57) and stated that, in order to terminate the appeal proceedings, he no longer approved the text in which the patent was granted and would not be submitting an amended text. Legal Advice 11/82 stated that in opposition proceedings, if  the applicant states that he no longer approves the text in which the patent was granted and does not submit an amended text, the patent must be revoked.

The Board noted with respect to the same situation in appeal proceedings that:

3. Since the text of the patent is at the disposition of the patent proprietor, a patent cannot be maintained against the proprietor's will. If the patent proprietor withdraws his approval, expressed before the first instance, of the text of the patent as granted and declares that he will not be submitting an amended text, it may be inferred that he wishes to prevent any text whatever of the patent from being maintained.

4. However, the patent proprietor cannot terminate the proceedings by telling the EPO that he is surrendering the European Patent, since this is not provided for in the Convention. Thus he would only be able, as far as national law permitted, to surrender the patent vis-à-vis the national patent offices of the designated Contracting States under the relevant national law.

5. At the same time, the proceedings ought to be terminated as quickly as possible in the interests of legal certainty, which calls for a clarification of the industrial rights situation. The only possibility in such a case is to revoke the patent, as envisaged for other reasons in Article 102 EPC. The practice followed by the Opposition Divisions is thus confirmed.

Since then, withdrawal by the proprietor of his consent to the currently pending text (or texts) in appeal proceedings is used to terminate the appeal proceedings by revocation of the patent.

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Headnote:

If the proprietor of a European patent states in opposition or appeal proceedings that he no longer approves the text in which the patent was granted and will not be submitting an amended text, the patent is to be revoked.

The full text of the decision can be found here.

See T 186/84 on the same issue in opposition proceedings.