7.1. Revocation of a European patent by way of a decision

In T 26/88 (OJ 1991, 30) the board of appeal had to rule on an appeal against a formalities officer's decision to revoke a patent under R. 82(3), second sentence, EPC (former Art. 102(4) EPC 1973) because the printing fee had been paid late. The board considered whether the revocation should have been issued in the form of a decision at all, concluding that the loss of rights under R. 82(3), second sentence, EPC had occurred by operation of law ("automatically") and that the formalities officer should have issued a communication concerning loss of rights in accordance with R. 112(1) EPC (former R. 69(1) EPC 1973).

In G 1/90 (OJ 1991, 275) the Enlarged Board of Appeal stated that the revocation of a patent under R. 82(3), second sentence and (2) EPC (former Art. 102(4) and (5) EPC 1973) required a decision. It drew a comparison between the various procedural stages (grant, opposition and revocation, in connection with the future Community patent) and concluded that the wording of the regulations clearly indicated in each case whether a decision or a communication had to be issued concerning the loss of rights under R. 112(1) EPC (former R. 69(1) EPC 1973). The Enlarged Board also considered the issue of legal certainty and, in the light of the "travaux préparatoires" relating to R. 112 EPC, discussed the question of when a loss of rights noted in accordance with that provision became non-appealable. It found that the procedure of pronouncing revocation by way of a decision led neither to legal uncertainty nor to misunderstandings. Whereas, in the grant procedure, there was a clear basis for the deemed withdrawal of an application, no such possibility existed with oppositions because the patent proprietor was unable to abandon his granted patent by making a declaration to the EPO. The Enlarged Board confirmed that it was up to the legislator to decide when to issue a communication pursuant to R. 112(1) EPC, which is followed on request by a decision (R. 112(2) EPC ), and when a decision was not preceded by such a communication. If the EPC had laid down different provisions for grant and opposition, that did not constitute an inherent contradiction.

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