13/10/2022
A petition for review is a way to challenge the final decision of the Technical Board of Appeal (“the TBA”) of the EPO. Since December 2007, when petitions for review were first made an available recourse, only 9 of 191 petitions succeeded – that is, resulted in the decision under review being set aside – putting the overall hit-rate at 4.7%. Clearly, the petitioner is rarely triumphant.
Having been involved recently in one of these 191 petitions for review, we took the opportunity to consider what it takes for one to succeed. Knowing what has worked in the past may provide useful guidance on how to act when faced with a decision from the TBA that has not gone the way you may have wanted or expected.
The petition for review was first introduced as Article 112a of the EPC, which states that:
“Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal.”
The purpose is neither to reconsider the patentability of the invention, nor the application of substantive law. A petition for review 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 occurred. This, one would hope, happens extremely rarely.
The possible grounds for a petition for review may be summarised as: a problem concerning the composition of the TBA (e.g. the inclusion of a partial or otherwise unsuitable member); any fundamental procedural defect including violations of Article 113 (the right to be heard); or the occurrence of a criminal act that impacted the decision.
Any petition for review must be filed within 2 months of notification of the decision of the TBA, and, crucially, if the petition for review is based on a procedural defect, it must have been objected to during original appeal proceedings and dismissed by the Board (Rule 106 EPC). This latter point has the effect that the petitioner must have given the Board the chance to react, during appeal proceedings, to remove the cause of the objection.
So, what were the factors that led to the rarely seen, successful, petitions for review? We have looked more closely at five petitions for review that were admitted and allowed. We have considered not only why they were allowed, but also what became of each case after proceedings were reopened.
R 7/09 and R 4/17
These are both cases in which poor communication from the EPO compromised the proprietor’s right to be heard.
In R 7/09, the first ever caseof an allowable petition for review, the opponent had filed a notice of appeal, followed by their grounds of appeal, against the Opposition Division’s rejection of their opposition. The TBA prepared a notification to the proprietor, setting the four-month deadline for submitting comments, but never actually sent the communication to the proprietor. The deadline passed, and having heard nothing from the proprietor, the TBA decided to revoke the patent in its entirety.
Something similar happened in a later case, R 4/17,where the opponent’s notice of appeal, grounds of appeal and a deadline reminder were sent to the proprietor in three separate letters without delivery receipts. None of the communications were acknowledged, because the proprietor had not received them. The Board considered the lack of response to mean there was no need to hold oral proceedings, and revoked the patent (ironically, the Board sent the notice of revocation of the patent to the proprietor with a delivery receipt.)
In both cases the proprietor filed a petition for review arguing that their right to be heard had been violated (Article 113(1) EPC). The petitions were allowed because, even though the appeal communications were available to the proprietor through the electronic public file, the proprietor had no duty to monitor the public file, and should always be specifically informed by the EPO of any developments.
Both cases were referred back to TBA and reopened, but ultimately, neither patent was upheld.
R 3/10 and R 15/11
In these cases, the petitioner submitted arguments addressing specific issues of patentability, but the decision was based on another issue on which the parties felt they had not had an opportunity to comment.
In R 3/10, novelty had been discussed in the oral proceedings before the TBA, but the decision to revoke the patent was based on inventive step which had not been discussed at the hearing. The proprietor felt they had been deprived of an opportunity to be heard on inventive step. Following the petition for review, the Board’s decision was set aside to allow the petitioner to be heard on inventive step.
In R 15/11, the applicant submitted arguments on novelty and inventive step. After adjourning to decide on these issues, the Board made a decision based on clarity; an issue that the applicant had not yet had the opportunity to address. The applicant’s request to address points of clarity at the hearing was dismissed.
In both cases the petitioner objected during the hearing, but was denied the opportunity to address the issue on which the decision was based. Both petitions for review resulted in the proceedings being reopened so that the petitioner could be heard on all issues of patentability. The patent of R 3/10 was ultimately revoked. The application of R 15/11 however, was granted.
R 2/14
The final case, R 2/14, concerned a protein and a method of using the protein in synthesis. The Board argued that the invention was insufficiently disclosed because the protein sequence as claimed did not itself have the required activity for the synthesis, and a number of cloning steps were required by the skilled person to identify a suitable variant for the synthesis. The Board held that this put an ‘undue burden’ on the skilled person. The proprietor had argued that the required cloning was a routine technique for the skilled person (being a molecular biologist), and that a document corresponding to the patent, which described the cloning routes in detail, had been published by the inventor.
The petition was allowed because the Board did not deal with these arguments or acknowledge the document anywhere in the decision, the summary of facts and submissions, or the reasons. The petitioner successfully argued that a party’s right to be heard extended to its right to have all relevant submissions and arguments fully taken into account in the written decision, so that it can understand, on an objective basis, the reasons for the decision.
While the petition was allowed, the patent was subsequently revoked by the TBA.
What is evident from these cases is that the bar for allowance is set very high. All of the successful petitions for review have been based on a fundamental procedural defect, but their success relies on there being an indisputable breach of the parties right to be heard.
Furthermore, it is clear that allowance is only the first hurdle; out of the nine successful petitions, only one (R 15/11) ultimately affected the fate of the case when it returned to the TBA (and it is noteworthy that this case related to an appeal from the Examining Division).
In our case (R 8/21), a petition for review was filed after a combination of issues led (in our opinion) to difficulties in our (the patentee’s) full case being heard. These issues included COVID-19-related travel restrictions requiring a video conference (ViCo) – this was prior to G1/21 which mandated ViCo proceedings before the TBA – and difficulties in communication during the ViCo (e.g. due to time delays in the electronic communication). An objection based on these issues was raised at the end of the ViCo hearing, but it was found to have not been raised clearly enough to give the TBA a chance to react to it during the appeal proceedings.
Despite the petition for review not being successful, it did clarify one procedural point; that the petitioner does not have to explicitly refer to Rule 106 when raising an objection during the appeal proceedings. Nonetheless, the petitioner does still have to make it clear that they are raising an objection in such a way that the TBA can react immediately and appropriately, by either removing the cause or dismissing it.
So, whilst the review system remains a viable protective tool for parties acting before the EPO’s Boards of Appeal successful petitions are, and will remain, few and far between.
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.
