The petition for review procedure under Article 112a EPC allows parties adversely affected by a decision of the Board of Appeal (BoA) to request a review by the Enlarged Board of Appeal (EBoA). The bar for an admissible request is high; only fundamental procedural violations may form the basis for a review, including:
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Participation of an unqualified or excluded BoA member;
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Violation of the right to be heard under Article 113 EPC;
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Serious procedural defects under the Implementing Regulations; and
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Criminal acts influencing the decision.
The scope for lodging a successful petition is further narrowed by Rule 106 EPC, which requires that the procedural defect must have been raised by the petitioner – and subsequently dismissed by the BoA – during the appeal proceedings. This doesn’t amount to much time for contemplation. (Although, this requirement does not apply if the defect couldn’t have reasonably been raised during proceedings.)
It’s arguably no surprise that successfully lodged petitions are notoriously rare. Attempting to spot them amongst the EPO’s list of decisions on petitions can be a mildly entertaining demonstration of this. New to this list however, is R 12/21 – only the eleventh successful petition for review since the procedure was introduced in 2007.
The facts
The petitioner appealed a decision of the opposition division revoking their patent. Subsequently, the BoA issued a summons to oral proceedings (OP), along with a preliminary opinion appearing to favour the petitioner. Looking to strengthen their position on novelty, the petitioner submitted an auxiliary request (AR) with additional features introduced into claim 1. The opponents also made submissions challenging the novelty of the main request.
During OPs, the BoA dismissed the main request as lacking novelty and – in an exercise of their discretion – refused to admit the AR into proceedings. In the later-issued written decision, the Board alleged that the petitioner had not fully presented their case for the AR under Article 12(2) RPBA 2007 and that the amendment did not prima facie overcome the issue of novelty in the main request, and did not therefore meet the criteria for late filed submissions under Article 13(1) RPBA 2007.
This was a surprise to the petitioner. During OPs, they were only permitted to comment on the admissibility of the AR in the context of late-filed submissions. Crucially, they were not allowed to comment substantively on novelty, even though the decision to refuse the AR was based on it.
Additionally, the BoA’s finding that the petitioner had not presented a complete case appears to have been flawed. Due to an oversight when reviewing the submissions, the Board had failed to see where the petitioner had indicated basis for the amendment in the AR. It’s not entirely clear whether this ‘finding’ partly informed the limited discussion during OPs, but one could speculate.
The petition
After the written decision was issued, a petitioner filed for review, alleging multiple procedural violations. Most were deemed inadmissible under Rule 106 EPC, as no objections were raised during appeal proceedings.
However, because it only became apparent through the written decision that the BoA had refused to admit the AR on grounds the petitioner had no opportunity to address, the request for review on these grounds was admissible. Further, the EBoA did not consider it relevant the Board internally thought that novelty had already been addressed under the main request. The EBoA ultimately concluded that the right to be heard had been violated.
The takeaways
R 12/21 serves as a valuable reminder of key aspects of the petition for review process under Article 112a EPC.
Indeed, one of the critical factors to lodging a successful petition for review is timing. Parties must be prepared to object to procedural irregularities as they arise during proceedings in order to preserve their right to petition. Taking short breaks during proceedings can offer a practical opportunity to assess and raise any concerns at the earliest possible stage.
This decision is also affirms the importance of the safeguard built into Rule 106 EPC, allowing for successful reviews where it was not reasonably possible to raise an objection during proceedings. Scrutinising the legal basis for the decisions against a detailed record of OPs could help parties identify previously hidden procedural missteps.