Successful petition for review at the European Patent Office

For only the second time the European Patent Office procedure under which an
appeal board decision can be challenged has been successfully used. The option for making a petition for review to the the Enlarged Board of Appeal (EBA) was brought in by the EPC 2000 law changes that took effect in December 2007.

In this case, the EBA was asked to reconsider the revocation of European patent 1 284 604 following an opposition and subsequent appeal. In the appeal oral proceedings, the opponents had argued against the novelty of the main request, which was followed by counter-arguments from the patentee. The chairman of the appeal asked if the parties had any further comments, and when the reply was in the negative he closed the debate. When the proceedings were resumed the chairman announced the decision that claim 1 of the main request was novel but lacked an inventive step.

The patentee therefore brought a petition for review, R3/10, on the basis that the requisite right to be heard under European practice had not been available. The patentee asserted that there was no reason to think that when the chairman closed the debate the appeal board was going to decide on anything more than what had been discussed orally, i.e. novelty of the main request. Therefore it had not been presented with the right to be heard on the issue of inventive step.

The EBA agreed that the patentee had been denied an opportunity to comment
on inventive step as a result of how the oral proceedings were conducted,
because the chairman had not mentioned inventive step when he invited the
presentation of further comments. Accordingly, the patentee’s right to be heard
had been violated in a fundamental manner. This was the case even though the patentee had filed written submissions on inventive step before the oral
proceedings and in spite of there being no intention on the part of the appeal
board to deny the patentee its right to be heard. The EBA therefore set aside the decision and re-opened the appeal proceedings, with the fee for the petition being reimbursed.

Although over fifty petitions for review have been filed, with only two being
successful to date, it was always the intention that the review system should only be used to rectify grave injustices rather than to allow the facts and arguments in appeal cases to be routinely revisited. From the two successful cases it is apparent that when there is a clear breach of a party’s right to be heard the review system can be used to address this.