It should go without saying but….
EPO Enlarged Board of Appeal significantly changes formal requirements for making a valid priority claim.
In November 2022, The European Patent Office’s (EPO’s) Enlarged Board of Appeal (EBoA) announced that a petition for review has been allowed. This was the first allowed petition for review since 2018, and only the 10th allowed petition for review.
Given the rarity of successful petitions for review, below we analyse petitions for review in general, the R3/22 petition itself, and why this specific petition for review was allowed.
Petitions for review were introduced into the European Patent Convention (EPC) in the revisions made in 2000 (known as “EPC 2000”), as the original EPC (“EPC 1973”) did not contain any mechanism by which a decision of a Board of Appeal could be reviewed by a higher authority. This prevented applicants from overcoming incorrect or improper decisions from any Boards of Appeal. In most contracting states of the EPC, decisions can be appealed ‘upwards’ to a higher court, but this wasn’t possible under EPC 1973, which raised inconsistencies which were ideally not present.
Accordingly, EPC 2000 introduced Article 112a EPC, which enables any party to proceedings adversely affected by a decision of a Board of Appeal to file a petition for review before the Enlarged Board of Appeal (EBoA).
Article 112a sets out the only circumstances in which a petition for review can be filed, which are deliberately very specific to avoid parties filing frivolous petitions with little to no chance of success.
The circumstances in which a petition for review can be filed are:
The first two possibilities relate purely to issues in the composition of the Board of Appeal, either in that Board members had potential impartialities or were not properly appointed as a member of the Board of Appeal.
The third and fourth reasons relate to procedural issues in the case history – Article 113 gives parties the right to be heard by the EPO, and the fourth reason gives routes of redress if the EPO has failed to follow its own regulations.
The fifth and final reason gives parties scope to file a petition for review in cases where criminal acts may have occurred in relation to the decision.
The R3/22 petition stems from a refused patent application. The decision to refuse the application was appealed by the applicant, and the Boards of Appeal issued their preliminary opinion on the appeal on 15 July 2021, ahead of oral proceedings to discuss the appeal later that year.
On 28 September 2021, the applicant withdrew the appeal, and requested a partial refund of the appeal fee. The following day, the applicant wrote to the EPO to withdraw their request to withdraw the appeal, stating that this was in error, as the representative had erroneously interpreted the client instructions.
On 1 October 2021, the Registrar of the relevant Board of Appeal closed the appeal, cancelled the scheduled oral proceedings, partially refunded the appeal fee, and sent a communication to the applicant accordingly. The applicant filed a further letter on 5 October 2021, setting out the position that the letter of 29 September 2021 withdrawing the request for withdrawal was a request to correct an error per Rule 139 EPC. It is established that withdrawal of an application can be corrected under Rule 139 EPC, if the withdrawal was in error (subject to certain conditions).
On 15 November 2021, the applicant requested a reasoned decision from the Registrar as to the refusal of the appeal. No decision was issued by the registrar.
The petition for review was filed on the basis that the EPO, in closing the appeal proceedings had made a decision which adversely affected them, without giving them a chance to submit their comments.
Therefore, the applicant alleged that their right to be heard had been violated (as they had no chance to make comments prior to the decision to close the appeal was made), and that a fundamental procedural violation had also taken place.
One key aspect of the applicant’s argument is that, in closing the appeal without giving any reasons and ignoring the letter of 29 September correcting the withdrawal, the Registrar made a decision to close the appeal without following due process, as they had not considered a relevant request (the request to correct).
In their decision on the petition for review, the EBoA found that, whilst no formal, written decision was made by a Board of Appeal, the act of closing the appeal without deciding on the request for correction had the substance of a decision.
Therefore, there was a fundamental procedural defect in line with Art 112a EPC, due to the fact that the registrar did not consider (or even acknowledge) the request for correction of the withdrawal. It has been established in previous case that such requests cannot be refused immediately, and some level of consideration must be given to the request. As this did not happen, the petition for review was allowable.
The EBoA therefore reopened the appeal proceedings and sent the appeal back to the Board for further proceedings and reimbursed the fee for the petition for review.
As the appeal proceedings were reopened, oral proceedings were scheduled for the original appeal, to discuss the request for correction or withdrawal. The applicant filed an auxiliary requesting that the Board of Appeal clarify that pendency of the original patent application (as appeals have suspensive effect, but petitions for review do not).
The oral proceedings were held on 3 March 2023, and centred around the applicability of correction under Rule 139 EPC.
At the end of the proceedings, The Board announced a decision, that the request for correction was refused, and as such the application ceased to be pending on 29 September 2021.
Overall, this case shows that even in the rare event where the EPO does make a decision which gives rises to an allowable petition for review, doing so may not materially improve the position of the affected party.
Whilst this case has provided clarity on what constitutes a decision of the EPO, the applicant is not better off than if they had simply not filed the petition for review.
If you have any questions about this case, please contact us to speak to one of our patent attorneys.