Wednesday, 7 March 2012

R 10/11 and R 2/11 – Busy Guillotine

If a fairy offered me a voucher allowing to get rid of one EPC provision, I guess I would choose R 106. However, as fairies are rare these days, we will have to live with this rule, which often determines the fate of petitions for review. Here are two recent examples, both translated from the French.

In the appeal underlying this case (T 383/09), Board 3.2.03 had revoked the opposed patent. The patent proprietor based his petition for review on a violation of its right to be heard.

[3.1] The obligation to raise an objection pursuant to R 106 as soon as the alleged grievance (grief) is identified is a procedural act that constitutes a necessary condition and a precondition for access to the extraordinary legal remedy offered by revision of last-instance decisions taken by the Boards of appeal. As such the objection has to be duly qualified by the party that raises it; this has to be done in such terms that the jurisdictional body is in a position to identify its nature and extent without any ambiguity. For the same reasons, it has to be specified by the the party that raises it, such that its legal basis can be identified within the exhaustive list provided by A 112bis(2)(a)-(d) and R 104.

This is well established in the case law; see inter alia R 4/08 [2.1], R 8/08 [1.2.3] and R 7/11 [2.1].

[4] In the present case this condition has not been complied with.

[4.1] As a matter of fact, it can be seen from the very wording of the petition for review […] that “[t]he Board of appeal then announced its decision not to admit auxiliary requests 3 and 4 into the proceedings”.

[5] It is true indeed that, according to the author of the petition, it had expressed the fact that it considered the behaviour of the Board of appeal to be flawed (vicié) and requested that its right to be heard on those requests be respected. However, this protest has not been qualified at all pursuant to R 106 as can be seen from the reasons of the impugned decision and from the minutes of the oral proceedings (OPs) dated March 17, 2011, which means that the Board has not been in a position to reject it or to allow it.

Moreover, it follows from the petition and from its complement that the admissibility of the third and fourth auxiliary requests has been discussed in great detail […].

[5.1] As a consequence, the right to be heard on the admissibility, which is by nature subject to the discretion of the Board, has indeed been granted.

[5.2] As a matter of fact, the petition, under the pretext of a violation of A 113(1), the petition only tries to challenge the way in which the Board used its discretion. In this respect the Enlarged Board can only remind [the petitioner] that by essence the discretionary power of a Board to admit late-filed requests or to dismiss them cannot be examined as to whether it has been exercised in the right way, unless the Board has exercised its discretion in a manifestly arbitrary or unlawful way, which is not the case here. As a matter of fact, the Board has made use of its discretion and found that the inadmissible requests prima facie did not overcome the objections raised against the maintenance of the patent.

[6] Thus the petition is clearly inadmissible and unfounded, and, as such, has to be dismissed.

To download the whole decision (in French), click here.

The file wrapper can be found here.

In the appeal underlying this case (T 150/09), Board 3.2.04 had also revoked the opposed patent. The patent proprietor based his petition for review on a violation of its right to be heard and another procedural violation.

The Enlarged Board found the petition to be inadmissible because R 106 had not been complied with. It repeated verbatim point [3.1] of R 10/11 (with the sole modification that R 10/11 was added to the list of decisions cited) and then went on :

[2.2] In the present case the petitioner has acknowledged that it had not qualified its objection but it points out that it had protested against the principle of the hearing of the expert cited by the adverse party, which necessarily identified the alleged violation. However, neither the minutes of the OPs nor the written decision show any trace of an objection that has been expressly qualified pursuant to R 106 which the Board of appeal had the opportunity to deal with in the course of the OPs.

Therefore, the preliminary condition for admissibility has not been complied with and the request is clearly inadmissible.

To download the whole decision (in French), click here.

The file wrapper can be found here.