Tuesday, 6 September 2011

R 20/10 – Exhausted

The present petition for review concerns a case (decision T 1478/07 of Board 3.3.01 ; see also my post dedicated to this decision) where the opposed patent, which had been maintained in amended form by the Opposition Division (OD) had then been revoked by the Board of appeal.

In the first instance proceedings, the OD had raised the ground of opposition under A 100 c) during the oral proceedings (OPs) and rejected the main request (i.e. the request to maintain the patent as granted) on this basis.

Before the Board of appeal, the patent proprietor objected to this introduction of a new ground of opposition and took issue with the fact that no prior discussion of the prima facie relevance had taken place before the OD. The Board did not endorse this criticism and pointed out that there was no need for the OD to hear the parties on the prima facie relevance of the introduction of a new ground of opposition.

In its petition, the patent proprietor argued inter alia that a violation of the right to be heard had occurred before the OD and that the Board had not remedied this procedural violation.

The EBA (EBA) found the petition to be clearly inadmissible:

[1] The petition for review of the decision T 1478/07 of Technical Board of Appeal 3.3.01 of 19 February 2010 was filed on 29 November 2010 and thus within two months of the deemed notification of the decision of the board of appeal within the meaning of A 112a(4), second sentence, in conjunction with R 126(2) . The fee for the petition was paid on the same day and, hence, also within the time limit.

[2] According to A 112a(4), first sentence, the petition shall be filed in a reasoned statement. Furthermore, R 107(2) stipulates that the petition shall indicate the reasons for setting aside the decision of the board of appeal and the facts and evidence on which the petition is based. According to R 108(1) the EBA shall reject the petition as inadmissible if the petition does not comply with A 112a, paragraph 1, 2 or 4, R 106 or R 107, paragraph 1(b) or 2.

[2.1] The mandatory requirement set up in the above-cited provisions that the petition shall be reasoned is not a formality.

It is, to the contrary, a very important condition for a petition for review to be admissible. Its function is to ensure that the EBA only has to deal with the kinds of cases for which the right to petition the EBA was instituted.

It is crystal clear from the preparatory documents relating to the 2000 that the purpose of creating the possibility of judicial review of decisions of the boards of appeal was to provide for an extraordinary and limited legal remedy for cases in which the proceedings before a board of appeal suffer from an intolerable procedural defect as defined in the EPC, i.e. in A 112a(2) in conjunction with R 104 . The function of the petition for review is not to further the development of EPO procedural practice, generally, or to ensure the uniform application of the law (see Synoptic presentation 1973/2000 - Part 1: The As, OJ EPO 2007, Special edition 4, 126).

It follows that procedural defects having occurred in first instance proceedings may not be the subject of a petition for review. Decisions of the first instance are subject to judicial review by the boards of appeal. The examination of an appeal includes the examination of any procedural errors allegedly made by the first instance. Thereafter, a party’s right to a judicial review of first instance proceedings is exhausted.

Furthermore, as the EBA has held ever since its first decisions R 1/08 [2.1] and R 2/08 [5, 8.3], the possible grounds for review are exhaustively listed in A 112a(2) in conjunction with R 104 (see likewise e.g. R 10/09 [2.4-5], R 1/11 [2.2]). This means that any other procedural defect in the proceedings before the board of appeal can only be considered to the extent that it at least allegedly results in one of the procedural defects listed in A 112a(2) in conjunction with R 104 (R 2/08 [headnote 1; 8.4]).

[2.2] As a consequence of the limited function and potential scope of petition for review proceedings, as defined above, the obligation to file a reasoned statement cannot be construed so narrowly as to mean that any kind of reasoning is sufficient to fulfil this requirement, so long it is only extensive enough. That the petitioner’s submissions are extensive cannot be denied, since they extend over nineteen full pages. Those nineteen pages, it must also be said, however, consist largely in the verbatim reproduction of extracts from decisions of boards of appeal, purportedly confirming the petitioner’s position.

In order to justify the EBA examining the merits of a petitioner’s case, the complaints made must provide at least a minimum context with a ground which could potentially constitute a ground for revision of a decision of a board of appeal within the terms of the EPC. This can also be inferred from the fact that R 106 requires as a condition for the admissibility of the petition that an objection under A 112a(2)a)-d) is raised in the proceedings before the board of appeal.

[2.3] A potential ground for review has not been raised in the petition.

[2.4] The petitioner’s complaint that the OD (as opposed to the board of appeal) violated its right to be heard falls completely outside the ambit of any of the possible grounds for review listed in the EPC. There is no more to be said on that.

[2.5] Under the circumstances of the present case as set out below, the same applies to the petitioner’s further argument that the board of appeal erred in its finding that the OD had exercised its discretion in an appropriate manner. Even assuming for the sake of argument that the petitioner was right in this respect, that would not mean that by (wrongly) deciding the legal question concerning the conduct of the proceedings by the OD, the board of appeal had thereby itself violated any of the provisions listed in A 112a(2) in conjunction with R 104, such as in particular its right to be heard. The petitioner itself does not even submit that. On the contrary, according to the petitioner’s own submissions, all the questions relating to the new ground of opposition raised by the OD, i.e. whether the OD should have heard the petitioner on the prima facie relevance of the objection before admitting it into the proceedings, whether the OD exercised its discretion correctly and whether the objections raised against the allowability of the amendment in question were well-founded, were discussed extensively in the proceedings before the board of appeal.

There is hence nothing in the petitioner’s submissions that may be regarded as substantiating a ground within the meaning of A 112a(2) in conjunction with R104 , on which, at least potentially, a petition for review could be based, and the petitioner itself has not indicated any of these as forming a legal basis for its petition. On the contrary, the submissions of the petitioner all boil down to saying that the board of appeal should have decided the issue of the OD’s admission of the new ground of opposition differently from how it did. In this respect, the EBA only notes that, the board having decided that the feature in question offended against A 123(2) , it is difficult to imagine how it could nevertheless justifiably have come to the conclusion that in admitting the new ground of opposition into the proceedings the OD exercised its discretion wrongly. As has also been acknowledged in decision R 1/11 [2.2, final sentence] a petition may not be used as a vehicle to review the merits of the decision of a board of appeal, even to the extent that that decision relates to procedural issues, as long as a wrong application of rules of procedure does not result in any of the defects listed in A 112a(2) (a) - (d), in conjunction with R 104 .

Since this has not been submitted in the petition, for this reason alone it has to be rejected as clearly inadmissible.

[3] Furthermore, there is also nothing in the petition for review indicating that during the appeal proceedings the appellant raised the objection of a fundamental procedural violation falling within one of the grounds on which a petition for review can be based being committed by the board of appeal itself if the board was to decide or because it did decide that the OD had exercised its discretion correctly and that, therefore, it would not remit the case to the OD. Nor has the petitioner submitted that it only became aware from the reasons of the decision of the board of appeal that it decided this issue in the way it did. On the contrary, the board had already indicated in its provisional opinion that it was not inclined to follow the petitioner’s interpretation of decisions G 9/91, G 10/91 and T 433/93, as regards the issue of what the OD must discuss with the parties before it may decide to introduce a new ground of opposition into the proceedings. In the oral proceedings before the board, the requests in question were undisputedly also discussed with respect to their compliance with A 123(2) . which implies the board’s position that the OD had exercised its discretion appropriately by admitting the ground of opposition into the proceedings. Hence, the requirements of R106 are not fulfilled either in the present case.

Accordingly, the petition must be rejected as clearly inadmissible. since pursuant to R108(1) a defect within the meaning of A 112a(4) and R 106 cannot be remedied after the expiry of the period for filing the reasoned petition.


For these reasons it is unanimously decided that:

The petition for review is rejected as clearly inadmissible.

To download the whole decision or have a look at the file wrapper, click here.