14/03/2023
(This is a follow-up to a previous article – see here for more information).
In November last year, the European Patent Office (EPO) published a decision to grant a tenth petition for review (see R 3/22). This brings the total success rate to 5.2%, with 10 of 194 petitions resulting in the decision under review being set aside.
To recap, a petition for review is a way to challenge the final decision of the Technical Board of Appeal of the EPO, under Article 112a of the EPC. A petition is supposed to serve as an exceptional measure, to be taken only when a serious procedural error that prejudices the right to a fair hearing has taken place. Its purpose is not to reconsider the patentability of the invention or the application of substantive law.
In this case (R 3/22):
The applicant submitted a statement of grounds of appeal on 9 February 2018, after the Examining Division refused the application in oral proceedings.
On 28 September 2021, the applicant’s professional representative submitted a request to withdraw the pending appeal. The next day, 29 September 2021, they submitted a request to reverse the withdrawal (a request they termed a ‘correction’), and explained that their original 28 September 2021 request to withdraw was based on a misinterpretation of the client’s instructions.
The Board then issued a communication stating the appeal proceedings were closed, without substantive decision, dated 1 October 2021.
The appellant wrote a letter on 5 October 2021 explaining the context of the wrongly filed withdrawal and that the correction was filed before any confirmation of the termination of appeal proceedings was made public. That same day, the Board issued a communication saying that the appeal proceedings had been terminated and the Board was no longer competent to deal with the case.
In the appellant’s petition for review, they argued that their right to be heard had been violated (Article 113(1) EPC), because the Board did not consider their submissions dated 29 September and 5 October 2021. They also argued that a fundamental procedural defect occurred when the Board did not decide on the request for correction, which was relevant to the existence of the appeal itself.
The question as to whether the appellant’s right to be heard had been violated was left open.
However, the petition was held allowable on the basis of Rule 104 EPC, which reads:
“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 Enlarged Board decided that the request for correction (i.e. reversing the withdrawal) was a relevant request within the meaning of Rule 104(b) EPC.
Therefore, in their communication of 5 October 2021, the Board had implicitly decided on the appeal, whilst not deciding on the request for correction. The Board’s refusal to decide on the request for correction was deemed a fundamental procedural defect.
The take-home points from successful petitions for review tend to be very case-specific, and it can be difficult to draw general conclusions that are relevant to future practice. However, it is worth noting that:
- It is not unusual for an appellant to withdraw an appeal, especially if a fee refund is available.
- It seems that it is possible for a withdrawal to be reversed by request – although presumably the request to reverse a withdrawal would have to be made before the appeal proceedings are terminated so that it can be argued that the Board of Appeal decided on the appeal without deciding on a request relevant to that decision (and therefore that a fundamental procedural defect took place).
- Any such request to reverse a withdrawal would have to be filed very quickly after the initial withdrawal. It is clear from R 3/22 that appeal proceedings are generally terminated within days of a withdrawal of appeal, so the window of opportunity to reverse a withdrawal is narrow. However, interested third parties should nevertheless be vigilant to make sure appeal withdrawal is not reversed.
It seems all of the above is only appropriate when the withdrawal was made in error. Any use of this as a tactic (e.g. false withdrawal and reversal-of-withdrawal in the days before a hearing) is likely to be viewed very dimly by the Board of Appeal!
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
