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Case Law of the Boards of Appeal

 
 
5.2. Requests for revocation during opposition and opposition appeal proceedings

The procedure for limitation/revocation pursuant to Art. 105a-105c EPC is not available during opposition and opposition appeal proceedings. However, a patent may still be revoked during such proceedings at the request of the patent proprietor.

If the patent proprietor 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. This is supported by Art. 113(2) EPC, which provides that a patent may be maintained only in a version approved by the patent proprietor. If there is no such version, one of the requirements for maintaining the patent is lacking (T 73/84, OJ 1985, 241, followed by numerous decisions, see also T 157/85).

If the patent proprietor himself requests that the patent be revoked, the decision to revoke the patent is given without substantive examination as to patentability. The examination as to whether the grounds for opposition laid down in Art. 100 EPC prejudice the maintenance of the patent becomes impossible since the absence of a valid text of the patent precludes any substantive examination of the alleged impediments to patentability (T 186/84, OJ 1986, 79; see also T 157/85, T 1659/07, T 124/08, T 1111/10).

In T 237/86 (OJ 1988, 261) the board stated 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. In T 459/88 (OJ 1990, 425) the board stated that if, in proceedings before the EPO, the patent proprietor himself requested that his patent be revoked, there could scarcely be any more cogent reason for revoking it since it could not be in the public interest to maintain a patent against its proprietor's will. The patent was thus revoked by the board exercising its powers under Art. 111(1) EPC 1973 (see also the more recent decisions T 655/01, T 1187/05, T 1526/06, T 1610/07, T 1541/09).

There must be no doubt that the proprietor applying to have the patent revoked is requesting revocation with the consequences specified in Art. 68 EPC 1973 (Art. 68 EPC), namely the cancelling of the effects of the European patent application and the resulting patent as from the outset (T 186/84, T 347/90, T 386/01). Where the respondent (patent proprietor) states that the patent has been abandoned 'since' a particular date, this cannot be considered to be a request for revocation, as it does not indicate that the patent has been abandoned ab initio. The case law on requests for revocation therefore does not apply and the appeal must be examined as to its merits (T 973/92).

In T 237/86, the statement "We herewith abandon the above patent" was held to be equivalent to a request for revocation to which the board could accede under Art. 111(1) EPC 1973 (see also T 347/90). In T 92/88 the words "the patent has been allowed to lapse in all designated states" were held to amount to a request for revocation. In a number of cases the boards have decided that a request by a patent proprietor to withdraw "the application" amounted to a request to revoke the patent (T 264/84, T 415/87, T 68/90 and T 322/91).

In T 646/08 the appellant, in a letter, withdrew its appeal and at the same time withdrew its approval of the text of the patent as maintained by the opposition division in its interlocutory decision. The board held that the letter did not contain an unequivocal statement of the proprietor that he accepted the revocation of the patent with all the consequences specified in Art. 68 EPC. The appeal proceedings were terminated.

A number of cases concern the situation in which the opposition division revoked the patent, and the patent proprietor appealed, and then, in the course of the appeal proceedings, requested revocation of the patent. In T 347/90 the board dismissed the appeal without going into the substantive issues, so that the revocation of the patent by the department of first instance was confirmed. In T 18/92, by contrast, the request by the patent proprietor (appellant) for revocation of the patent was interpreted by the board as a withdrawal of the appeal. Withdrawal of the appeal meant that the first-instance decision revoking the patent took effect. In T 481/96 the board examined the two solutions and endorsed T 18/92. In T 1244/08 the board confirmed that according to established case law (see also T 1003/01 and T 53/03), if an appellant holding a patent revoked by an opposition division states clearly and unambiguously that it is no longer interested in pursuing the appeal proceedings, that is tantamount to a statement withdrawing the appeal. The withdrawal had the effect of immediately terminating the appeal proceedings, such that the opposition division's revocation decision became final. Any later request to retract the withdrawal and continue appeal proceedings was inadmissible.