EPO Enlarged Board: Rebuff 1/08

Patentanwalt Rainer Boeckelen of TBK-Patent has kindly informed the IPKat of a recent decision of the EPO Enlarged Board of Appeal that has as yet not apparently received much in the way of publicity, at least not via the EPO's own list of decisions of the Board. This might have something to do with its assigned case number R 0001/08 [should we be expecting up to 9998 other decisions this year, perhaps?] which, at least to those familiar with the usual labelling of EPO appeal decisions (T for technical board, J for legal board, G for enlarged board and W for wobble board), might sound a bit odd. This is because the decision is the first to issue as a result of the new EPC2000 provision of Article 112a that allows for a petition for review of a decision of a lower board to the enlarged board but (and it's a big but) only if:

"(a) a member of the Board of Appeal took part in the decision in breach of Article 24, paragraph 1, or despite being excluded pursuant to a decision under Article 24, paragraph 4;
(b) the Board of Appeal included a person not appointed as a member of the Boards of Appeal;
(c) a fundamental violation of Article 113 occurred;
(d) any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or
(e) a criminal act established under the conditions laid down in the Implementing Regulations may have had an impact on the decision."

The petitioner in this case was the proprietor of the patent in question, EP0916347, which had been unsuccessfully opposed but, on appeal, revoked by the technical board of appeal on the grounds of a lack of inventive step in the proprietor's auxiliary request (the main request also having failed). The proprietor complained that they had not been given an opportunity to respond to any allegations of lack of inventive step in the request, and were consequently very surprised when the patent was revoked. In their view, the appeal board was guilty of a fundamental violation of Article 113, partly because, according to rule 111(2), decisions of the EPO which are open to appeal should be reasoned.

The Enlarged board thought otherwise. On reviewing the preparatory documents illustrating the reasoning behind the introduction of Article 112a, it was clear to the board that the review procedure was meant to be "an extraordinary legal remedy the filing of which does not affect the force of res judicata of the decision under attack", meaning that the provisions were to be applied in a strictly limited fashion. It was not the purpose of Article 112a to allow a case to be decided by a third instance (after, in this case, the opposition division and appeal board), but to "provide the right for judicial review founded on a limited number of grounds that have been exhaustively defined by the legislator". The fact that the auxiliary request was not argued (for or against) in the appeal proceedings, partly as a result of the opponent/appellant not appearing in person, did not mean that it was automatically allowable. The proprietor had already been given an opportunity to argue for the validity of the request, and it should not have been surprising to them when the board issued its decision. No provision of the EPC required that the party must be provided with all foreseeable arguments for or against a request in advance, and not to do so was not a fundamental violation of the right to be heard. The enlarged board then unanimously decided that the petition for review was not allowable.

The IPKat can see how this one was always going to be a slim possibility, and suspects the attorneys in this case would have though so too, but he congratulates them (and their clients, of course) for having the nerve and money to have a go anyway. It was reasonably clear from the outset that Article 112a was never going to be particularly useful as a third instance at the EPO, but it is useful for the rest of us to find out just how little use the provision is likely to be, now that we have had the opportunity to read what the enlarged board actually thinks of it.