R 16/09 – Woe To Him That Addeth …

This decision has also some interesting paragraphs on partiality and the precise interpretation of A 112a and its implementing rule: R 104.

[2.3.1] The petitioner contended at the OPs before the EBA that a fundamental violation of any general procedural principle may be a procedural defect “defined” in A 112a(2) (d) and its implementing rule R 104. It deduced from the word “may” in R 104, “a fundamental procedural defect may have occurred …” (emphasis by the EBA) that the two defects were to be understood as members of a list which is not exhaustive. It referred to J7/83 for the definition of a procedural violation and to G 9/91 for the general principle of impartiality.

[2.3.2] Under the heading of “violation of the principle of impartiality” the petitioner complained about a wrong exercise of its discretion by the Board of Appeal which refused to admit the proposed auxiliary request in circumstances where it was expected to be admitted according to the general practice and case law of the Boards of Appeal and the personal experience of the representative.

[2.3.3] The EBA finds it necessary to make it clear that the principle of impartiality according to the EPC and, also in its natural and ordinary meaning, does not cover the currently alleged procedural defect. Under the EPC, this principle addresses the question of suspected partiality of the members of the Board of Appeal pursuant to A 24. The violation of this principle is mentioned by A 112a(2)(a) which is clearly not applicable here.

[2.3.4] Turning to what the petitioner is really complaining about, this appears in fact to be a criticism of the course of action taken, and of the merit of the decision made by the Board of Appeal on the admissibility issue, compared to the petitioner’s understanding of the case law.

[2.3.5] That having been said, the EBA firstly notes that the alleged violation is not included in the list of fundamental procedural defects of R 104. This rule implements A 112a(2)(d) which provides:

“any other fundamental procedural defect as defined in the Implementing Regulations”.

The wording of A 112a(2)(d) is quite clear:

• a petition for review can only be filed on the grounds it specifies
• it leaves it to the Implementing Regulations to define further procedural defects which may justify a petition for review. This implies that what is not defined by the Implementing Regulations does not qualify as a procedural defect in the sense of A 112a(2)(d).

Among the Documents of the Travaux préparatoires relating to the discussion of A 112a, Document MR/21/00,d,e,f which relates to A 112a is especially illuminating: Under the reasons given to explain the proposed wording of the paragraph (d) of the said article, which became the final wording, it is commented that

“the proposed A 112a(2) lists the possible reasons for a ‘Petition for review by the EBA’. A 112a(2)(d) provides that further fundamental procedural defects on which a petition for review may be filed may be defined in the Implementing Regulations, if the need arises”.

R 104 is the implementing rule providing two additional fundamental procedural defects to wit, (a) the Board did not hold OPs despite a request to this end; or (b) it omitted to decide upon a request.

Consequently it is clear that the list of grounds specified in A 112a is exhaustive and if an alleged defect which is neither on the list of A 112a nor one defined by its implementing rule it cannot form a basis for a petition for review.

[2.3.6] Since the list of grounds for review mentioned in R 104 is exhaustive and since the Board decided on the request to file an auxiliary request R 104 is of no relevance here, and the arguments of the petitioner based on this rule must fail.

[2.3.7] Secondly, as already noted above […], the Board of Appeal exercised the discretion provided by Article 13 RPBA; the petitioner admitted that it was a matter of discretion but criticised the way in which the Board of Appeal exercised it referring to particular decisions of the Boards of Appeal.

[2.3.8] In the light of the above, the EBA sees no procedural violation in the present case. In fact the petition seeks no more than a review of the Board of Appeal’s assessment of the circumstances and criteria it took into consideration in applying Article 13 RPBA. As is apparent from the case law of the Boards of Appeal, there is room for discretion of the boards of appeal when making the balance between the criteria and choosing to which precedence must be given with respect to the circumstances of each case. To find otherwise would require the EBA first to re-examine whether or not the Board of Appeal was right in its judgement, which is a substantive and not a procedural issue.

[2.3.9] This review is thus outside the scope of A 112a which is an exceptional legal remedy limited to fundamental procedural defects in an individual case and not a means for further development of the EPO procedural practice or for ensuring a uniform application of the law, and under no circumstances can it be used to review the application of the substantive law.

[3] Consequently the petition is clearly unallowable.

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