R 7/08 - The Enlarged Board Won’t Soliloquize

NB : As you might know, "R" decisions are decisions on petitions for review by the Enlarged Board of Appeal (EBA) under A 112a EPC.  

The contested decision (T 1375/06) was based on aspects of insufficiency of disclosure which were discussed for the first time during the oral proceedings. The Board refused the request to admit into the proceedings two documents allegedly establishing the general knowledge of the skilled person. According to the petitioner (proprietor), by doing so, the Board did not decide on a request relevant for the decision under R 104(b) and furthermore its decision was based on a fundamental procedural violation under A 113, as these documents were disregarded. The petitioner argued that if the Board had taken these documents into consideration it would have immediately realised the scope of the general knowledge of the skilled person and that the description disclosed the invention sufficiently within the meaning of A 83.

[…] Since the impact of R 106 was a question of fundamental importance within the meaning of A 112(1), the petitioner requests the Board to refer the following question to the EBA “For the application of the provisions concerning the admissibility under R 109(2)a, is it necessary to raise the procedural violation during the oral proceedings or to raise an objection against a ground for revocation which could constitute a substantial procedural violation if it was accepted ?” [VI]

The request to refer a question to the EBA can only mean a referral pursuant to A 112(1)(a). However, the present Board is not a “Board of Appeal” within the meaning of this provision (see A 21 EPC) and thus the request fails. [4]

In other words, the EBA, when deciding on a petition for review under A 112a, does not accept referrals to the EBA under A 112. The EBA won't refer a question to itself.

To read the whole decision, click here.