Tuesday, July 03, 2018 T 1898/14 - change of mind of the proprietor

The opposition division decided to maintain the European patent in amended form and the opponent lodged an appeal requesting revocation of the patent.

The proprietor initially requested dismissal of the appeal. However, upon summons to oral proceedings, the proprietor changed his mind and withdrew its approval of the text of the patent in any form and requested revocation of the patent. While the latter request could not be allowed by the BoA in view of Art. 105a(2) which excludes requests of revocation while appeal opposition proceedings are pending, the former withdrawal is accepted by the BoA in line with established case law (see for example T 73/84).

Summary of Facts and Submissions

I. By way of its interlocutory decision, the opposition division held that European Patent No. 1 390 572 as amended met the requirements of the European Patent Convention (EPC).

II. The appellant (opponent) filed an appeal against this decision requesting revocation of the patent.

III. The respondent (patent proprietor) requested dismissal of the appeal as a main request and submitted auxiliary requests 1 to 3.

IV. In a communication annexed to a summons to oral proceedings, the Board expressed its provisional opinion on the requests before it.

V. With letter of 23 May 2018, the respondent withdrew its approval of the text of the patent in any form and further requested revocation of the patent.

VI. The oral proceedings were subsequently cancelled.

Reasons for the Decision

1. Under Article 113(2) EPC, the European Patent Office shall consider and decide upon the European patent only in the text submitted to it, or agreed, by the proprietor of the patent. This principle has to be strictly observed also in opposition and opposition appeal proceedings.

2. The respondent, by withdrawing approval of the text of the patent in any form, has thereby withdrawn its approval of any text for maintenance of the patent. Since the text of the patent is at the disposition of the patent proprietor, a patent cannot be maintained against the patent proprietor's will. There is therefore no text of the patent, on the basis of which the Board can maintain the patent.

3. Revocation at the request of the patent proprietor in the framework of opposition or opposition appeal proceedings is not possible, as it is expressly excluded by Article 105a(2) EPC. At the same time, the proceedings ought to be terminated as quickly as possible in the interests of legal certainty. The only possibility in such a case is for the Board to revoke the patent as envisaged in Article 101 EPC, as also requested by the appellant.

4. In view of the above, the Board concludes that the patent must be revoked. This conclusion is also in line with established case law in inter alia T 73/84, T 186/84, T 237/86, T 459/88, T 655/01, T 1526/06, T 1960/12 and T 1535/13.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside

2. The patent is revoked

This decision T 1898/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T189814.2018062.  The file wrapper can be found here. Photo  obtained via Pixabay under CC0 license (no changes made).