Declarations of Independence: EPO Enlarged Board upholds the rights of patent proprietors

One Kat, two cases

This Kat has just learned of two cases, one not so new and one rather more recent, in each of which the Enlarged Board of Appeal of the European Patent Office (EPO) has been upholding the rights of parties before the EPO (in both instances, patent proprietors). Both cases are "R" decisions under Article 112a EPC 2000, whereby a party can request the Enlarged Board to review a decision of a Board of Appeal for an alleged fundamental procedural violation.  Most such cases are hopeless attempts to overturn an unwelcome Board of Appeal decision, and are unsuccessful.

Case R 0016/13

R 0016/13 is a rare example of a successful review case -- it's apparently only the 5th successful review ever.  It is not new (it came out in December 2014), but what is new is the excellent and detailed report of the decision in English (the original decision is in German) in the latest EPI Information (you can download it at the link here; the article starts on page 100) by Dr Eva Ehlich, a patent attorney at Maiwald.

I WILL be heard!

In the decision under review, the patent proprietor had filed comparative data in support of inventive step.  During the written and oral proceedings, these data had not been criticised or questioned either by the opponent or the Board of Appeal.  The proprietor was therefore surprised to find that the written reasons for revoking the patent were that the comparative data were incomplete and could not therefore support an inventive step.  In the review, the Enlarged Board found a fundamental violation of the right to be heard, and so set aside the decision and ordered a fresh hearing before a different Board. The Enlarged Board decision does not prohibit the Boards of Appeal from relaying on ex officio grounds that were not raised by either party, but it does lay down a rule that such grounds, unless there is no doubt that they are foreseeable by the parties, must be indicated no later than the Summons to Oral Proceedings, so that parties are not taken by surprise and can prepare appropriate response.

Case R 0002/15

Buprenorphine

The other case to interest this moggy is the interlocutory decision in R 0002/15, dated 21 October 2015.  The matter concerns the recusal of the chairman of the Enlarged Board considering the petition.  The decision is remarkably short on facts, and the identities of all of the parties are redacted, but the underlying patent is EP0964677 (sustained analgesia achieved with transdermal delivery of buprenorphine), from which it can be seen that the representative is the firm of Maiwald, and in particular the petition relates to the interlocutory Board of Appeal decision of 2 October 2014 in T 1938/09 (in that decision, an objection of suspicion of partiality against that chairman of that Board was rejected, and the case proceeded, with the Board in its original composition with Ulrich Oswald as chairman, to a final decision that can be seen here).

Showing no personal interest ...

The petition for review does not appear to be on the public file, presumably because of its content, and the decision itself is rather brief.  However, it appears that the petitioner made an objection of suspicion of partiality against the Chairman of the Enlarged Board, who presumably from the business distribution scheme would be Wim van der Eijk, who was therefore replaced by Rainer Moufang for considering the issue of suspicion of partiality.

Noteworthy in this case is that the original Chairman objected to agreed to his own recusal, stating:

"Although (1) I have no personal interest in the outcome of the case and (2) actually played no role, at least not voluntarily, in the factual events that gave rise to the decision under review, it is a matter of fact that I was, during the proceedings before the Board of Appeal [...], personally addressed by the petitioner on the subject-matter of the suspected partiality of the chairman of the Board of Appeal.  Given that these particular circumstances could give an impression that I have been involved in the case, which could cast doubt on my ability to deal with the case in an impartial way, I inform the Enlarged Board, in accordance with Article 24(2) EPC, that I should not take part in the petition for review proceedings."

From the reasons for the decision, it is clear that the petitioner had, during the underlying proceedings in  T 1938/09, written to the Chairman of the Enlarged Board to ask whether Ulrich Oswald had ever deputised for him in his capacity as Vice President of DG3 of the EPO; if so, it was considered that the reasoning of R19/12 would apply equally to any deputy, so that Ulrich Oswald should be recused in the T 1938/09 appeal case.  The Chairman of the Enlarged Board had not provided an answer to that question.

The Enlarged Board considered that the circumstances justified the withdrawal of the original Chairman, so that it was ordered that the petition for review should proceed with the Enlarged Board in its amended composition with Rainer Moufang as Chairman.  The outcome of that review is awaited.

In one aspect, this decision is just one procedural step in a much longer dispute.  In another aspect, it is a welcome confirmation by the Enlarged Board that the independence of members of the Boards and Enlarged Board of Appeal must be seen to be beyond doubt in any case.