Friday, 22 January 2010

R 5/08 – Party Involvement in Petition Proceedings

The present decision concerns a petition for review filed by the opponent in case T 601/05. In fact, it is one of the rare decisions on petitions for review which went beyond the preliminary examination (first stage).

In T 601/05, the Board of Appeal had set aside the decision revoking the opposed patent. After being notified of the petition for review, the patentee/respondent filed a purported reply to the petition. The Enlarged Board (EBA) then issued a communication which drew the attention of all the parties to R 109(3) and directed them not to file further written submissions until it had decided whether or not the petition was clearly inadmissible or unallowable. The EBA then repeatedly held oral proceedings (OPs): first with the petitioner alone and then in the presence of all the parties. The patentee complained that its right to be heard had been violated, in particular because it had not been summoned to the first OPs. This prompted the following comments by the EBA:

The EBA considers that it should comment on [the respondent’s complaints] in order to clarify the position for potential parties in other possible petition proceedings. In the judgment of the EBA, the respondent wholly misunderstood the two distinct stages provided by A ll2a and R 109 for the treatment of petitions for review. [28]

R 109(1), headed “Procedure in dealing with petitions for review”, provides in its first sentence that: “In proceedings under A ll2a, the provisions relating to proceedings before the Boards of Appeal shall apply, unless otherwise provided.”

As regards the procedure for the first stage of petition proceedings, there are indeed such measures “otherwise provided”, namely R 109(2) and (3). [29]

R 109(2)(a) provides that the EBA composed of three members shall examine all petitions for review and reject those which are clearly inadmissible or unallowable. R 109(3) states that the EBA in that composition shall decide “without the involvement of other parties and on the basis of the petition.” The cumulative effect of those two provisions is that, in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties and are indeed called such in R 109(3) itself, but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint, such as that made by the respondent, of a denial of the right to be heard can arise. [30]

The respondent’s distinction between involvement in proceedings and involvement in a decision is a strained and artificial interpretation of R 109(3). That provision says quite clearly “The EBA composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under A ll2a and R 109(2)(a) and (3), are three members of the EBA. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of R 109(3) and the only interpretation it can bear. [31]

It follows that all the respondent’s other arguments in this respect are redundant. A 112(2) does not apply, even by analogy, since R 109(3) “otherwise provides”. The provisions about OPs (A 116, R 115(1), first sentence, and R 126) do not apply to parties other than the petitioner because they are not involved - again, R 109(3) has “provided otherwise”. This is not contrary to A 125 EPC as there is no breach of the principle of good faith because no duty of good faith lies towards those not involved. Nor is there a contravention of A 164(2) because R 109(3) is not contrary to A 113(1). [32]

There is general support for the EBA’s view in the travaux préparatoires which, at several stages of the legislative process, stressed the need for a quick screening process to be conducted by a three member panel of the EBA in order to reject petitions which clearly cannot succeed. It is clear that, in advocating this fast, summary first stage of proceedings, the legislator was actually intending to benefit parties other than petitioners by not requiring them to take any steps in response to a petition until the EBA should be satisfied that it was not to be rejected as clearly inadmissible or unallowable. Thus, while the respondent argued that the first stage proceedings put it at a procedural disadvantage, the first stage is actually advantageous to parties other than petitioners. [33]

For completeness it should also be observed that non-petitioner parties, although not summoned to OPs in the first stage, may of course attend such proceedings which are public. Further if, as a result of the first stage proceedings, a petition is not found by unanimous decision to be clearly inadmissible or unallowable, it will then be considered by the EBA in the larger composition provided for in R 109(2) (b) and, if and when that second stage is reached, the other parties are to be involved. [34]

To download this decision, click here.