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Sunday, 11 March 2018

Eighth Granted Petition for Review

Last month, the EPO published it's eighth ever decision granting a petition for review (R 4/17). Granted petitions for review are notoriously difficult to obtain, as the EPO attempts to balance the need for the legal certainty of Board of Appeal (BoA) decisions, and the right to challenge flagrant violations of EPO procedure.  

Offices of the Enlarged Board of Appeal, Haar
The right to a petition for review is established by Article 112a and Article 22(1) EPC, which allow the limited judicial review of BoA decisions by the Enlarged BoAas an extraordinary legal remedy. The EPO has repeatedly stressed the strictly limited nature of this remedy:
"decisions of the boards of appeal must remain final decisions which are res judicata. However, under certain circumstances many legal systems offer a possibility to review final decisions of a court which are res judicata. It is acknowledged that even a final court decision must be set aside if maintaining it without further review would be intolerable...Under no circumstances should the petition for review be a means to review the application of substantive law" (CA/PL 17/00 of 27 March 2000).

 A petition for review can be filed on the grounds that:
  1. the composition of the board was not correct (e.g. contained a non-impartial member);
  2. a fundamental violation or any other fundamental procedural defect of the right to be heard had occurred; or
  3. a criminal act may have had an impact on the decision. 
Crucially, the petition must be filed within 2 months from the notification of the decision and, where ever possible, the objections forming the grounds for review must have been raised during appeal proceedings (Rule 106 EPC). A number of petitions have been considered unallowable because the Enlarged Board of Appeal (EBoA) considered the petitioner to have had the opportunity to raise the complaint with the BoA, but did not.  In one case, where the minutes of oral proceedings contained no statement of the relevant objections having been made by the petitioner, allegedly incorrectly, the petition was not allowed because the petitioner had not requested correction of the minutes nor mentioned the incorrect minutes in the petition (R 7/08). In this resepct, the burden of proof is firmly on the petitioner.

Case Background

The present case (R 4/17) related to the granted patent EP 1490411 (Rhodia Chimie) directed to methods for stabilizing emulsions. An opposition was brought against the patent on the grounds that the claims lacked novelty. It was rejected in the first instance proceedings by the Opposition Division. The decision was appealed by the opponent, who cited a new allegedly novelty destroying document.  The case was referred to the Board of Appeal (BoA) (T 1277/12). In line with appeals procedure, the EPO sent the proprietor three letters containing, respectively, the notice of appeal, the statement of grounds and an invitation for the proprietor to respond within the standard time limit of 4 months from notification. 

According to the EPC guidelines for examination: "Decisions incurring a period for appeal...must be notified by registered letter with advice of delivery" (E II.2.3), i.e. a document sent by the Post Office to the sender of a letter by registered post that the letter has been delivered. Contrary to these guidelines, the three letters sent to the proprietor were sent by registered post without advice of delivery. 

The proprietor failed to file a response to the statement of grounds and the BoA thus revoked the patent without issuing an invitation to oral proceedings. This decision was sent to the proprietor by registered post with advice of delivery. 

Petition for Review

According to Article 113(1) EPC, a decision of the EPO can only be made based on grounds on which the concerned parties have had an opportunity to present their comments. The Proprietor filed a petition for review of the BoA decision on the grounds that a fundamental violation of this right to be heard had taken place

The Proprietor argued that they had never received the letters containing the notice of appeal, statement of grounds and invitation to respond, and were unaware of the appeal until they received the appeal decision. The Proprietor filed hard copies of 2 screen shots of their internal database to demonstrate their lack of awareness of the appeal. Given the nature of these grounds, it of course had not been possible for the Proprietor to have raised the grievance during appeal proceedings (Rule 106 EPC).  

Lost in the post
In response to the grounds for petition, the opponent submitted that it was not plausible that all three letters had not arrived, given that they were preceded and followed by letters sent to the same address, that had arrived. 

However, the EBoA granted the petition, in view of the EPC provision that in the event of a dispute as to whether a letter sent by the EPO was received, it is incumbent on the EPO to establish receipt (Rule 126(2) EPC). The EBoA considered that "it can not be expected that the Petitioner should prove a negative, that is the non-receipt of the letter, or provide a plausible explanation for non-receipt (negativa non stunt probanda)". As the EBoA went on to comment, the situation would have been different if the EPO could demonstrate by advice of delivery that the letters had been received and then mislaid by the Petitioner. The EBoA thus allowed the petition, returned the case to the BoA and refunded the petition fee.  


The case is reminiscent of the first ever petition of review to be granted (R 7/09), in which the letter providing the statement of grounds of appeal was never sent. In both cases, the EBoA confirmed that a party has no duty to regularly inspect the electronic file register and should expect the EPO to send the relevant notifications according to its own provisions. 

Petitions for review have dropped in recent years, perhaps due to their limited chance of success. This case demonstrates that the EPO is willing to grant petitions for review where the case for severe procedural violation is clear. The case perhaps benefited from the impossibility of the grounds for petition to have been raised before the BoA, a provision that appears to cause difficulties for many petitioners.


Look at things said...

Even if the procedure before the BA is reopened, the chances of a reversal of the decision are rather remote.

Up to now, it only happened once that a decision has been reversed when the file went back to a Board. Going from refusal of the application it ended up with a grant.

In all other cases, in opposition, the first decision was confirmed.

In the case at stake, the opponent filed a late ground of opposition under Art 100,b) which was not admitted by the opposition division.

Even if has been summarily dismissed, it does not appear that the opposition division did exercise its discretion in an improper way. It look more than a hidden clarity objection. It is in any case doubtful that the proprietor will consent to this ground be introduced in the new appeal procedure.

The patent was revoked due to late filed document which destroyed the novelty of granted claim 1. An indirect conclusion is thus that the the invention could be enabled.

It will be interesting to see whether the revocation will be maintained.

So wait and see.

Peter said...

Rule 126(1) was recently amended to specify that "Decisions incurring a period for appeal [] shall be notified by registered letter with advice of delivery or equivalent. " The added "or equivalent" allows for the use of commercial delivery companies like DHL. Furthermore, the tree letters at issue do not incur a period for appeal (i.e. a period for filing an appeal). So the "Contrary to these guidelines" in the post is not entirely clear to me. On the other hand, it is indeed the 8th successful petition for review. The numbers seem now somewhat stable, it appears that 10 petitions were filed in 2017, a few more than in 2016.

Look at things said...

It is amazing how Techrights manages to twist any statement in order to use it in his libels.

What my comment has to do in the latest libel "Doubt Over Independence of Judges at the EPO Clouds Reason in Deciding Regarding Patents on Life" remains a mystery. The more so that it is linked with an alleged procedural violation. In the present case there has been a procedural violation but it is due to a failure the support services and not as such by a Board answering God knows which instructions.

There are limits to what can be taken from a public blog. Certainly not to distort statements!

May I therefore suggest to put a ban on the reuse of publicly available comments.

Techrights is one of those usurpers. If he wants to publish anything, he is free to do so, but he should not be free to poach what others say!

Am I wrong when I think that the copyright of the comments remains with the writer, even under pseudo, or at least with the blog owner?

Let's stop this nonsense!!

Anonymous said...

Why does the EPO send letters using registered post when they are unable to establish that the letter has been delivered? I know that this point is not at the heart of this case, but it seems clear that the EPO was unable to establish delivery of the 3 registered letters which should have been sent with an advice of delivery.

Look at things said...

If the "Accusé de reception", i.e. the red card does not come back, then it cannot be proven that the letter arrived!

Anonymous said...

Reference is made to the Guidelines. However, the Boards are not bound by those guidelines but only by the EPC. According to the EPC, Rule 126(1), only decisions incurring a period for appeal should be sent by registered letter with advice of delivery. The three letters in question were neither decisions, nor did they incur a period for appeal. Therefore, no procedural violation has been made by the Board or by the registry. The essence of the EBA decision is based on the fact that it could not be proven that the party in question had received the letters. It makes one wonder why no attempt seems to have been made to retrieve what happened to the letters, as they had seemingly been sent by registered mail, only not with advice of delivery. Perhaps it was too long ago? So does it make sense to send letters by registered mail at all, if not with advice of delivery?

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