Alex Bajjon

March 2016

Under Article 112a EPC a party to appeal proceedings may file a petition for review of the decision by the Enlarged Board of Appeal. One instance is where a fundamental procedural defect occurred during the appeal proceedings and the petitioning party was adversely affected as a result of the decision.

However, Rule 106 EPC states that a petition under Art. 112(a) is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal. The only exception to this is where such an objection could not be raised during the appeal proceedings.

The Enlarged Board of Appeal appear to take a very strict view on the admissibility of petitions under Art. 112a and only in certain circumstances will a petition meet the requirements of Rule 106.

Circumstances where the Objection Could Not Be Raised During the Appeal Proceedings

The Enlarged Board of Appeal takes a very strict interpretation of when an objection could not be raised during appeal proceedings and there appear to be very few circumstances where the Petitioner can bring an admissible petition, where no previous objections have been raised.

One such circumstance is where the procedural defect only becomes apparent in the written decision of the Appeal Board. In R1/08, the Appeal Board revoked an opposed patent based on grounds and arguments which the proprietor was not aware of. In this case, it was held that the Petitioner was unable to raise an objection during the oral proceedings and therefore the petition was admissible.

There appear to be few, if any, circumstances where a petition is admissible where the procedural defect first became apparent before the issuance of the written decision. Therefore, it is of upmost importance that, should a procedural defect occur, the affected party raises an explicit objection during the course of the appeal proceedings.

Raising Objections during the Appeal Proceedings

In order for a petition under Article 112a to be admissible for a fundamental procedural defect, an objection in respect of the procedural defect must have been raised during the appeal proceedings, according to Rule 106 EPC. Two criteria for a Rule 106 objection to be valid were set out in R4/08.

Firstly, the objection must be expressed by the party in such a form that the Board of Appeal is able to recognize immediately. This allows the Board to take appropriate action whilst the proceedings are still ongoing and remove the cause of the objection. In R8/08, the Enlarged Board of Appeal emphasised that a party should draw the board’s attention expressly, and separately from its other submissions, to any fundamental procedural defect to enable it to investigate and, if necessary, rectify the alleged defect while the proceedings are still pending and thereby obviate the need for subsequent review proceedings under Article 112a EPC. Based on case law of the Enlarged Board of Appeal, although the term “explicit” is not used, it seems necessary that when raising an objection under Rule 106, such an objection should be stated explicitly

Secondly, the objection must be specific. Therefore, the petitioner must indicate unambiguously which particular defect of those listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it believes to have occurred.

When determining whether a valid objection had been raised during oral proceedings, the Enlarged Board of Appeal will often turn to the minutes of the oral proceedings to see whether any objections had been noted

Therefore, if an objection was not raised at the time of the procedural defect, the Petitioner should ensure that an objection is raised before the proceedings are concluded and closed by the Chairman. Although a Rule 106 objection, if expressed explicitly by the party, should be noted by the Appeal Board and also minuted, if it appears that the objection was not noted in the minutes, a request for correction of the minutes should be made before filing a petition under Art. 112a.

Summary

From the case law of the Enlarged Board of Appeal, it appears that there are two general scenarios where a petition under Art. 112a will be admissible:

1. Where the procedural defect only became apparent in the written decision.
2. Where the petitioner explicitly and specifically objected to the procedural defect (in accordance with Rule 106) and the objection was then dismissed by the Appeal Board.

Therefore, if a fundamental procedural defect occurs during oral proceedings, in order for a petition for review by the Enlarged Board of Appeal to be successful it is highly advisable to explicitly object to the procedural defect, in accordance with Rule 106, preferably as soon as the defect becomes apparent, but certainly before the concluding of oral proceedings.