Voluntary surrender of patents

and central revocation at the

EPO
Essentials

valid and National approaches

Remedies UPC regime
infringed to damages
valid and
not infringed
Costs
invalid and
not infringed
Declarations of non-
invalid but Amendment/ Voluntary surrender
infringement and
infringed limitations and central revocation
compulsory licences

Introduction

Prior to 2007, when the European Patent Convention 2000 (EPC 2000)

came into force, the only way in which the proprietor of a European
patent could voluntarily cancel his patent was to do so at national level,
where possible, under the relevant national rules. The provisions of
the EPC 2000 introduced a mechanism by which a patent proprietor
may request that his European patent be revoked anywhere in the EPC
countries where it exists, by a single action (Article 105a EPC).

The existence of this revocation procedure under Article 105a EPC does

not, however, preclude patent proprietors from following national
procedures for surrender, nor does it prevent a proprietor from choosing
to let his patent lapse through the non-payment of renewal fees, both
of which remain viable options, especially if the patentee is seeking
cancellation of his patent in certain contracting states only. However,
the effect of patent revocation using these methods is very different. If
a patent is allowed to lapse due to non-payment of renewal fees, or if it
is surrendered in national proceedings (at least in the UK), its revocation
does not have a retrospective effect (ex nunc). In contrast, if a patent is
revoked by the central revocation procedure at the EPO, the revocation
takes effect across Europe ex tunc. In other words, it is deemed to have
never existed (Article 68 EPC). In certain circumstances, for example
where fees have been paid to the proprietor under a licence agreement,
this may be a commercially important distinction, then depending on the
terms of the agreement.  

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Central revocation at the EPO – an overview

Because some European countries did not provide for the voluntary Article 105(a) EPC
Request for limitation or revocation
surrender of a patent, EPC 2000 introduced Article 105a, providing (1) At the request of the proprietor,
centralised limitation and revocation procedures at the level of the the European patent may be revoked
or be limited by an amendment of the
EPO, which allows the patent proprietor either to have the claims of his claims. The request shall be filed with the
granted patent limited or to have the whole patent revoked for all its European Patent Office in accordance with
the Implementing Regulations. It shall not
designated states. According to the travaux préparatoires (preparatory be deemed to have been filed until the
work), the purpose behind the implementation of the new procedures limitation or revocation fee has been paid.
was to facilitate legal certainty and access to the relevant technology by (2) The request may not be filed while
opposition proceedings in respect of the
competitors. European patent are pending.

Central revocation at the EPO is an ex parte administrative procedure Article 105(b) EPC

Limitation or revocation of the European
before the examining division. The procedure is available for all European patent
patents, whether granted before or after the date on which EPC 2000 (1) The European Patent Office shall
examine whether the requirements laid
came into force (13 December 2007). The proprietor will not have to down in the Implementing Regulations for
explain why revocation is sought, as this is not a discretionary remedy. limiting or revoking the European patent
have been met.
Indeed, Rule 90 of the Implementing Regulations to the Convention
(2) If the European Patent Office
on the Grant of European Patents expressly states that the purpose considers that the request for limitation
underlying the request is of no relevance to its allowability. or revocation of the European patent
meets these requirements, it shall decide
to limit or revoke the European patent
As indicated above, the effect of the central revocation of a European in accordance with the Implementing
Regulations. Otherwise, it shall reject the
patent under Article 105a EPC is that the patent in question is deemed request.
never to have existed, i.e. it is revoked ex tunc (Article 68 EPC). Further, the (3) The decision to limit or revoke the
EPO revocation procedure is an “all or nothing” regime. It does not allow European patent shall apply to the
European patent in all the Contracting
proprietors to request revocation in selected contracting states. It does, States in respect of which it has been
however, enable them to partly revoke their European patents by seeking granted. It shall take effect on the date
on which the mention of the decision is
limitation thereof. published in the European Patent Bulletin.

In most cases, simply not paying the renewal fees would be a patent
proprietor’s preferred approach (“lapse”). However, voluntarily revoking
your own patent may be attractive if, for example, you wish to avoid
the patent being challenged by third parties, or if there is a perceived
antitrust risk associated with maintaining the patent (or corresponding
supplementary protection certificates) or some other reason why
cancellation of the patent is deemed desirable. In such circumstances a
proprietor may request revocation via the central procedure, rather than
allowing the patent to lapse, in order to achieve commercial certainty
faster. It would take 19 months after the last renewal date of the patent
for it to lapse with no chance of restoration.

There are no provisions for the surrender of a patent at the EPO. If a

proprietor unambiguously declares to the EPO that he wants to abandon
his patent, this is interpreted as being equivalent to a request that
the patent be revoked under Article 105(a) EPC (see T 237/86 and EPO
Guidelines for Examination D-VIII, 1.2.5).

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Requests for limitation or surrender are governed by Article 105b EPC and
Rules 90-96 of the Implementing Regulations to the Convention on the
Grant of European Patents. Further guidance on the procedure is set out in
the Guidelines, D-X.

Central revocation at the EPO – timing and procedure

Requests for surrender can be filed at any time after grant, after
opposition proceedings, or even after the patent has expired. A request
for surrender can be made even when national proceedings are afoot,
in which case such national proceedings may or may not be stayed
(depending on national practice) pending the outcome of the proprietor’s
request for surrender.

In contrast, requests for surrender cannot be filed if the patent is already

subject to pending EPO opposition proceedings. In such circumstances,
the request for surrender is deemed not to have been filed (Article 105(a)
(2) EPC) and the fee returned. However, if a surrender request is made
and subsequently opposition proceedings are initiated, the surrender
proceedings will continue (in contrast to limitation proceedings), and
the patent may be revoked and the opposition terminated. In such
circumstances the opposition would only continue if the formalities of
the request for surrender were not satisfied and the request rejected or
withdrawn.

In order for a proprietor to request surrender of a European patent at

the EPO, the patentee must file a formal request and pay a fee (currently
EUR 520: Article 2(10) Rules Relating to Fees (RFees)). The request is not
deemed filed until the fee has been paid. Nationals, residents or persons
having their principal place of business in a contracting state who file in
an official language of that state other than English, French or German
benefit from a 20% reduction in fees (Article 14(1) RFees). If the request
is made in a language other than English, French or German, it must
be translated into one of those languages within a month of filing of
the request, otherwise the request is deemed not to have been made
(Rule 6(2) EPC).

The request will be checked by a formalities officer to ensure it complies

with the requirements set out in Rule 92 EPC. These include providing the
name, address and nationality, and state of residence or principal place
of business of the person requesting the surrender. As well as the patent
number, the request must indicate in which contracting states the patent
has taken effect, even if in the meantime it has lapsed in one or more of
those states (Rule 92(2)(b)). It must identify the contracting states for
which the requester is the proprietor of the patent, and if the requester
is not the proprietor in all the contracting states in which the patent

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takes effect, the names and addresses of all proprietors must be provided
together with evidence that the requester can act on their behalf. Due
to the retroactive effect of surrender (Article 68 EPC), such evidence is
also required in cases where the patent has lapsed in one or more of the
contracting states. When the requester acts through a representative, the
representative’s details must also be provided.

Deficiencies in the request can be rectified within a prescribed time

period (Rule 94 EPC) and decisions rejecting a request for surrender as
inadmissible or not allowable are open to appeal. If, on the other hand, a
request for surrender is admissible, the examining division will go ahead
and revoke the patent. The decision takes effect on the date on which it
is published in the Bulletin, and in all the patent’s designated contracting
states (Article 105b(3) EPC).

National proceedings: voluntary surrender

By way of contrast and to give an indication of the alternatives available

under national law and procedure, the following information concerns
the availability of and procedure for surrendering a patent nationally in
the UK, Germany and the Netherlands.

UK Section 29 UK Patents Act 1977

Surrender of patents
The effect of surrendering a patent in the UK is that the patent is (1) The proprietor of a patent may at any
time by notice given to the comptroller
deemed to cease to exist as of the date when notice of the Comptroller’s offer to surrender his patent.
acceptance of the surrender is published in the Official Journal. Surrender (2) A person may give notice to the
comptroller of his opposition to the
is therefore appropriate when the proprietor no longer wishes to surrender of a patent under this section,
maintain a patent but equally does not accept that the patent is invalid and if he does so the comptroller shall
notify the proprietor of the patent and
and ought to be revoked. Surrendering a patent, rather than consenting to determine the question.
surrender in court proceedings, would be attractive to a proprietor when (3) If the comptroller is satisfied that the
patent may properly be surrendered, he
licence payments or royalty payments have previously been made – if the may accept the offer and, as from the date
patent was revoked, it would mean that the patent would be deemed to when notice of his acceptance is published
in the journal, the patent shall cease to
have never existed, and any payments made under that patent could be have effect, but no action for infringement
put at risk. Nevertheless, the procedure is not commonly used and only 14 shall lie in respect of any act done before
that date and no right to compensation
applications to surrender were made in 2014 in the UK. shall accrue for any use of the patented
invention before that date for the services
In the UK, the surrender of patents is governed by Section 29 of the of the Crown.
Patents Act 1977, and the procedure governed by Rule 42 of the Patents
Patents Rule 42
Rules. Surrender
The notice of an offer by a proprietor to
Although patentees must notify the Comptroller of Patents in writing if surrender a patent must be in writing and
they wish to surrender their patent, there is no need for them to state the include:
(a) a declaration that no action is pending
motivation for the surrender and no fee is required. before the court for infringement or
revocation of the patent; or
(b) where such an action is pending, the
particulars of the action.

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Any offer to surrender a patent must be published in the Patents
Journal and can be opposed by any third party for a four-week period
after publication (Patents Rules 76(2)(b)). The practice on opposition is
governed by Part 7 of the Patents Rules 2007. An opponent would most
likely be a licensee of the patent who wanted to protect his business from
competitors, or a party who would benefit from the patent being revoked
ab initio rather than from the date of surrender (for example a past payer
of licence fees or royalties – see above).

Although the procedure is not very common, there have been a few
recent cases before the UK Comptroller of Patents which illustrate the
nuances and differences between a patent being revoked (ex tunc) and
surrendered (ex nunc). If an action to revoke the patent is on-going
before the UK courts,19 the Comptroller must decide whether to stay the
surrender request until those proceedings are concluded (or at least until
the Court is notified and has considered the implications of a surrender).

In BL O/360/14 (Genentech Inc’s Patent) and BL O/475/02 (Dyson), the

hearing officer found that in certain circumstances it may be appropriate
to accept an offer to surrender while a surrender action is in progress,
although it was acknowledged that staying the offer to surrender pending
resolution of the national proceedings was the more usual course of
action. The hearing officer gave the following reasons for allowing
surrender notwithstanding parallel surrender proceedings in Genentech
Inc’s Patent:

(i) The claimant and the court were both aware of the offer to surrender
made by the patent-holder.

(ii) No-one, including the claimant, had opposed the surrender.

(iii) The court was aware of the offer to surrender and had expressed the
view that it should/would continue.

(iv) Accepting the offer to surrender in relation to one of the three patents
in the revocation proceedings would not adversely affect the action
and would actually simplify matters.

(v) The claimant and the court, although they did not state it expressly,
had proceeded on the assumption that the offer of surrender would be
accepted.

Germany

The Patentgesetz (German Patent Act) (PatG) provides for two different
mechanisms that allow a patentee to unilaterally remove a patent: waiver
and revocation. While a waiver has effect ex nunc, revocation will be
effective ex tunc.

19 The EPC and the UK Patents Act 1977 (as amended) apply equally to all parts of the United Kingdom.
Jurisdictionally, however, the United Kingdom is divided into three parts: England and Wales, Scotland,
and Northern Ireland. Proceedings in the Scottish courts differ markedly from those in the other
jurisdictions.

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Waiver (Section 20 PatG)
According to Section 20 PatG, a patent may lapse either following a Section 20 PatG
Lapse of the patent
“waiver” by the patentee or because of unpaid renewal fees (“lapse”). (1) A patent shall lapse if
For a waiver, the patentee has to file a written declaration with the 1. the patentee waives it by written
declaration to the Patent Office;
Deutsches Patent- und Markenamt (DPMA) (German Patent and Trademark 2. the annual fee or the difference are
Office). In order to be entitled to declare a waiver, he must be registered in not paid in due time (Section 7(1),
Section 3(3) or Section 14(2) and (5)
the patent register as the owner of the patent. Patentkostengesetz (Patent Cost Act),
Section 23(7), sentence 4, of this Act).
However, the declaration of waiver does not have to be expressly referred
(2) The decision whether the payments
to as a declaration of waiver.It is sufficient if the declaration’s intent is have been made in due time shall rest
clear. solely with the Patent Office; Sections
73 and 100 shall remain unaffected.
A waiver may be declared for the patent in total or for independent
parts thereof, such as a single claim (BGH, GRUR (1962), 294, 295/296 –
“Hafendrehkran”). In this respect, it is worth mentioning that the waiver
declared for a main claim does not automatically comprise a waiver for
dependent sub-claims. Thus, all claims that should be waived have to be
specifically mentioned.

The waiver is effective ex nunc. As a consequence, claims for injunctive

relief and/or destruction cease to be available after the effective date of
waiver. However, damage claims for the time before the effective date
of waiver remain available. Concurrently, the validity of the patent may
still be attacked in nullity proceedings in order to obtain a declaratory
judgment on invalidity for the time before the effective date of waiver.

A waiver is possible even if nullity or opposition proceedings are pending

against the patent. The continuation of such pending proceedings
depends on whether the plaintiff can establish a sufficient legal interest
in such proceedings despite the waiver. Such legal interest may be based
on exposure to damage or indemnification claims for the time period
before the waiver became effective.

The patent may lapse not only following a waiver of the patentee but also
due to failure to pay the renewal fees (Section 20(1), second sentence,
PatG). The effects of a waiver apply in the same way in such a situation.

Surrender and voluntary limitation of claims (Section 64 PatG)

According to Section 64(1) PatG, patentees may request the revocation of Section 64 PatG
(1) A patent may be revoked at the request
their patents. of the patentee or limited with retroactive
effect by amending the patent claims.
According to Section 64 PatG, the patentee may be able to initiate a
change of the claims of the granted patent, but not of the description.
The difference between this and a waiver under Section 20 PatG is that
“revocation” or limitation operates ex tunc.

In particular where the patent is being revoked in part, i.e. where its
claims are being limited, the patentee must provide the reasons for the
limitation, e.g. a notice of relevant new prior art. The DPMA will review
the request in order to exclude undue claim broadening. 

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The Netherlands

The surrender of a patent under Netherlands law is governed by Article 63 Article 63 Nederlandse Octrooiwet
(Netherlands Patents Act)
Nederlandse Octrooiwet (Netherlands Patents Act). In principle, the 1. A patent holder may surrender his
surrender will have retroactive effect, in line with the provisions in Articles patent in whole or in part. The surrender
of the patent shall be effective retro­
75(5) to (7) on revocation. actively in accordance with Article 75(5)
to (7).
The ex tunc effect of surrender lies in the fiction that the proprietor will 2. The surrender shall be effected by
registering a deed to that effect in the
be presumed never to have had a right to enforce the patent or collect patent register. The Office shall not
reasonable compensation in the interval between the filing of the register the deed as long as there are
persons who, by virtue of documents
application and the grant of the patent. entered in the patent register, have
registered rights in respect of the
patent or have received licences or
However, the retroactive effect does not extend to court decisions based have commenced legal proceedings
on the surrendered patent, or to agreements regarding the patent, such concerning the patent and such persons
have not consented to the surrender.
as licences. A licence to a surrendered patent does not lose its legal basis.
Nevertheless, the circumstances of the case might call for a repayment of
a portion of the license fees. Article 75 Nederlandse Octrooiwet
(Netherlands Patents Act)
[ … ]
Surrender will only be effected after registration of a deed from the patent 5. A patent shall be deemed from the
outset not to have had any or some of
proprietor, raising the (partial) surrender of his patent. Article 63(2) the legal effects specified in Articles 53,
further states that the Octrooicentrum Nederland (Netherlands Patent 53a, 71, 72 and 73 to the extent that
the patent has been wholly or partially
Office) will not register such a deed without the consent of persons or invalidated.
entities that: 6. The retroactive effect of the invalidation
shall not extend to:
(a) have registered rights or licences with regard to that patent; or a. a decision, other than one granting
injunctive relief, relating to acts that
(b) are a party to court proceedings regarding that patent. infringe the exclusive right of the patent
holder referred to in Article 53 and 53a
or relating to the acts referred to in
Apart from licences, other registered rights affecting a patent include Articles 71, 72 and 73 that have acquired
encumbrances such as pledges and attachments. In the Netherlands the force of res judicata and have been
enforced prior to the invalidation; or
licences do not have to be registered in the patent register. Registration
b. any agreement concluded prior to
is, however, required for the licensee to be able to raise a patent action the invalidation insofar as it has been
against third parties. performed prior to the invalidation;
however, in the interest of equity the
repayment of sums paid under the
Whereas the rights under (a) are apparent from the patent register, the agreement may be claimed to the extent
justified under the circumstances.
Octrooicentrum Nederland (Netherlands Patent Office) does not have
7. For the purposes of paragraph (6)(b),
records of all pending patent proceedings under (b). The writ of summons the conclusion of an agreement shall
initiating revocation proceedings before the Netherlands courts must also be deemed to include a licence
created in another manner provided for
be registered, but counterclaims raising the invalidity of a patent in suit in Article 56(2), 59 or 60.
are not necessarily registered. A party can register its counterclaim for
invalidity with the Netherlands Patent Office in order to obtain protection
against surrender of the patent in issue.

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