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INFORMATION FROM THE EPO

LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 8/80

Article 78(1)(a) EPC

Withdrawal of a European patent application

The withdrawal of a European patent application is binding on an applicant.

1. The European Patent Office has been asked whether the processing of an application which has been withdrawn can be resumed at the request of the applicant.

2. The answer to that question is that a valid notice of withdrawal which has been received at the European Patent Office is binding on the applicant.

The EPC attaches various direct, legal consequences to a notice of withdrawal by the applicant. Under Article 67, paragraph 4, EPC the European patent application is deemed never to have had any protective effect if the European patent application is withdrawn. The date on which the European patent application is withdrawn must, under sub-paragraph (n) of Rule 92, paragraph 1, EPC, be entered in the Register of Patents and, under Article 129(a), be published in the Patent Bulletin. Under Rule 48, paragraph 2, EPC the date of withdrawal determines whether a European patent application is published. Renewal fees under Article 86 EPC can only become due while the European patent application is pending.

3. For the sake of an orderly grant procedure and because of the importance, in the public interest, of knowing the legal position, it is essential for the point in time at which the said legal effects result from a notice of withdrawal to be clearly established. This requirement does not permit of an interim state of uncertainty as to whether the applicant might perhaps retract his notice of withdrawal. For example, the retraction of a notice of withdrawal filed prior to publication of the application would interfere with the rights of an applicant against whose later application the prior application, once withdrawn, could no longer form part of the state of the art under Article 54, paragraph 3, EPC. Similarly, the rights of a competitor who has used the subject-matter of an application after that application's withdrawal would also be impaired by retraction, but here the Convention makes no provision for compensation as it does in Article 122, paragraph 6, EPC regarding the reinstatement of an application by re-establishment of rights. The absence of a corresponding provision concerning retraction of a notice of withdrawal accords with the view that the Convention does not provide for such retraction.

4. That the withdrawal is binding on the applicant also emerges clearly from the fact that various Articles in the Convention provide that an application shall be deemed to be withdrawn (e.g. Article 90, paragraph 3 , Article 91, paragraph 5 , Article 94, paragraph 3 , Article 96, paragraph 3 ). Apart from the cases expressly provided for in which the procedure is continued (Articles 121 and 122 EPC), the fiction of withdrawal is binding on the applicant, since the loss or rights is merely noted by the European Patent Office (Rule 69 EPC). The fiction of withdrawal cannot, however, have more far-reaching effects than withdrawal itself. This shows that the Convention views the notice of withdrawal as basically irrevocable.

5. In a case of withdrawal by mistake, Rule 88 EPC may be applicable1. Thus, for example, a wrong file number in the notice of withdrawal due to an error of transcription may be corrected on request. It is not as yet possible to draw on actual experience in the competent departments of the European Patent Office in respect of the application of Rule 88 EPC with regard to notices of withdrawal.