Any party to appeal proceedings adversely affected by the decision of the Board of Appeal can file a Petition for Review of the decision by the Enlarged Board of Appeal. However, such petitions may only be filed on the grounds that:
(i) the composition of the board was not correct,
(ii) a fundamental violation of the right to be heard occurred
(iii) a fundamental procedural defect occurred
(iv) a criminal act had an impact on the decision.
Historically, the success rate of Petitions for Review at the EPO has not been high, falling at around 5%. That said, November saw the granting of the 10th Petition for Review. Read on to get a flavour of what it takes to succeed.
Timeline of events
The applicant filed a Petition for Review against the ‘decision’ of the Board of Appeal in T 0695/18 of 5 October 2021 not to consider their submissions of 29 September and 5 October 2021 respectively.
The Petition for Review was based on (i) Article 112a(2)(c) EPC and (ii) Article 112a(2)(d) EPC in connection with Rule 104(b) EPC. Thus, the Petition for Review was based on (i) the argument that the applicant had their right to be heard violated when their submissions of 29 September 2021 and 5 October 2021 were not considered and (ii) the argument that a fundamental procedural defect occurred when the Board decided on the appeal without deciding on the request for correction in line with Rule 104(b) EPC which states that “A fundamental procedural defect under Article 112a, paragraph 2(d), may have occurred where the Board of Appeal […] (b) decided on the appeal without deciding on a request relevant to that decision.”
The first point considered by the Enlarged Board of Appeal was whether any ‘decision’ within the meaning of Article 112a EPC had in fact been issued. Here the applicant prevailed, with the Enlarged Board of Appeal noting that:
“[d]etermining whether there is a decision depends on the substance of the document content and not its form. The decisive question is whether the document at issue is to be understood by its addressee as a final determination of substantive or procedural issues by the competent organ of the EPO”.
With respect to the Board of Appeal’s Communication of 5 October 2021, the Enlarged Board of Appeal noted that “the content of the registrar’s communication is implicitly: The appeal proceedings have come to an end and will not be re-opened.”. Accordingly, the Board of Appeal’s Communication of 5 October 2021 was held to be a ‘decision’ within the meaning of Article 112a EPC.
As the Petition for Review was filed within 2 months of the decision being issued and the fee was timely paid, the Petition for Review was held admissible.
With admissibility decided, next to consider was allowability.
And again, the applicant prevailed with the Enlarged Board of Appeal noting that according to the case law of the Boards of Appeal on Rule 139 EPC, the success of a request under Rule 139 EPC cannot be ruled out a priori.
Accordingly, the request of the applicant under Rule 139 EPC of 5 October 2021 was found to be a relevant request under Rule 104(b) EPC for the purposes of Article 112a(2)(d) EPC and as such a fundamental procedural defect was found to have occurred with the effect that the decision of the Board of Appeal of 5 October 2021 was set aside and proceedings before the Board of Appeal reopened.
The applicant’s arguments with respect to the right to be heard under Article 112a(2)(c) EPC were not considered in light of the conclusion with respect to Article 112a(2)(d) EPC.
Whilst the applicant will no doubt have been pleased with the outcome, Petitions for Review do not have suspensive effect and so there is always the worry that in the period between the Board of Appeal’s decision and the Petition for Review being allowed and published a third party has begun, in good faith, activities that would otherwise have constituted infringement.