Petition for review under the European Patent Convention

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000".[1] A petition for review can essentially only be based on a fundamental procedural defect.[1] Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability.[1][2] The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants.[3] Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.[4]

Requirements and effects

A party to appeal proceedings may file a petition for review. To do so, the party must however have been adversely affected by the Board of Appeal's decision.[5] The prescribed contents of the petition for review is laid out in Rule 107 EPC. The petition must be filed with a time limit of 2 months from the notification of the Board of Appeal's decision, except when based on the grounds that a criminal act may have affected the decision of the Board of Appeal. In the later case, the petition must be filed "within two months of the date on which the criminal act has been established", but no later than five years after notification of the Board of Appeal's decision. Furthermore, a fee must be paid.[6]

The review procedure has no suspensive effect on the Board of Appeal decision.[1][7][8] If the petition is allowable, the Enlarged Board of Appeal sets aside the decision and re‑opens proceedings before the Boards of Appeal.[9]

Obligation to raise objections (Rule 106 objection)

Under Rule 106 EPC, "a petition under Article 112a, paragraph 2(a) to (d), 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, except where such objection could not be raised during the appeal proceedings." In other words, unless the reason for an objection comes into light only in the written decision of the Board of Appeal, not raising an objection under Rule 106 EPC as early as possible during the appeal proceedings may be fatal to the admissibility of a petition for review.[10] An objection under Rule 106 must be immediately recognizable by the Board of Appeal and it must be specific, i.e. "the party must indicate unambiguously which particular defect of those listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on".[11][12]

Grounds for review

There are five sets of grounds for review as laid out in Article 112a(1) EPC. The available grounds are strictly limited to these enumerated grounds.[1][13]

The ground for review that a violation of Article 113 EPC occurred (violation of the right to be heard) is one of those most expected to be relied upon and, at the same time, it leaves much room for argument.[1]

However, a procedural error marring the appeal proceedings does not, by itself, suffice to guarantee a successful petition. There must be a causal link between the alleged procedural defect and the damaging decision. Otherwise, the defect was not decisive and hence not fundamental.[14][15]

Procedure

The actual procedure for examination of the petitions for review involves two stages.

First stage: Rejection of clearly inadmissible or unallowable petitions

First, a three-member Enlarged Board decides whether the petition is clearly inadmissible or unallowable. If so, the petition is thrown out immediately.[8] This first stage is "a quick screening process to be conducted by a three member panel of the Enlarged Board in order to reject petitions which clearly cannot succeed."[16] It is, in other words, a sifting process.[8] To reject a petition as clearly inadmissible or unallowable, the three-member panel has to reach the decision unanimously.[8][17] The decision is taken based only on what is in the petition,[8][18] and the other party or parties, if any, are not involved and not invited to oral proceedings during that first stage.[8] Most petitions are rejected during this first stage.[19]

Second stage: Five-member examination

Secondly, if the petition is not rejected during the first stage, a five-member Enlarged Board examines the petition as to its merits.[1][20] If the petition is allowable, the decision is set aside, the case is re-opened and sent back to the Board which took the reviewed decision, and the fee paid upon filing the petition for review is reimbursed to the successful petitioner.[21][22] The Enlarged Board of Appeal has also the power to replace members of the Board of Appeal who took the reviewed decision.[8][23]

Statistics

The first petitions for review included R1/08 (application no 97600009), R2/08 (application no 00936978), R3/08 (application no 01943244) and R4/08 (application no 98116534).[24][25][26] The first allowable petition for review was decision R 7/09, for a fundamental violation of Article 113 EPC.[27]

References

  1. 1 2 3 4 5 6 7 Julian Cockbain, Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal, Journal of Intellectual Property Law & Practice (2009) 4 (12): 876-892. doi:10.1093/jiplp/jpp168.
  2. ↑ EPO web site, Frequently asked questions about the revised European Patent Convention (EPC 2000), item 14. Consulted on October 31, 2007.
  3. ↑ Basic proposal for the revision of the EPC, MR/2/00
  4. ↑ Enlarged Board of Appeal Decision G1/97
  5. ↑ Article 112a(1) EPC
  6. ↑ Article 112a(4) EPC
  7. ↑ Article 112a(3) EPC
  8. 1 2 3 4 5 6 7 Kevin Garnett, QC (8–9 November 2012). EPO boards of appeal and key decisions, Petitions for review to the Enlarged Board under Article 112a EPC, four years on – an overview of decisions to date (Part 1 of 4). Munich, Germany: European Patent Office. 2:45 to 4:50 minutes in. Retrieved July 8, 2013.
  9. ↑ Article 112a(5) EPC
  10. ↑ Regarding the obligation to raise the objection as early as possible, see R 1/14, point 3: "That an objection is raised in good time is an indispensable prerequisite for the admissibility of a petition under Article 112a EPC. The wording of Rule 106 EPC does not say so explicitly, but it is in keeping with its spirit and purpose, which is 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 – as envisaged in Rule 106 EPC – and thereby obviate the need for subsequent review proceedings under Article 112a EPC."
  11. ↑ R 4/08, point 2.1, discussed in Cockbain, 2009.
  12. ↑ Kevin Garnett QC (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 4: Deciding on petitions for review of decisions. Munich, Germany: European Patent Office. 0:56 to 1:52 minutes in. Retrieved August 5, 2012.
  13. ↑ Kevin Garnett, QC (8–9 November 2012). EPO boards of appeal and key decisions, Petitions for review to the Enlarged Board under Article 112a EPC, four years on – an overview of decisions to date (Part 1 of 4). Munich, Germany: European Patent Office. 0:20 to 0:28 and 0:59 to 1:48 minutes in. Retrieved July 8, 2013. (referring to R 1/08 and R 2/08)
  14. ↑ Julian Cockbain, Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal: part II, Journal of Intellectual Property Law & Practice (2011) 6 (2): 85-92. doi:10.1093/jiplp/jpq169.
  15. ↑ Kevin Garnett, QC (8–9 November 2012). EPO boards of appeal and key decisions, Petitions for review to the Enlarged Board under Article 112a EPC, four years on – an overview of decisions to date (Part 4 of 4). Munich, Germany: European Patent Office. 4:17 to 5:07 minutes in. Retrieved November 9, 2013. (referring to R 1/08, and R11/08)
  16. ↑ Enlarged Board of Appeal decision R5/08 of February 5, 2009, Reasons 33.
  17. ↑ Rule 109(2)(a) EPC
  18. ↑ Rule 109(3) EPC and R 5/08
  19. ↑ Kevin Garnett QC (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 4: Deciding on petitions for review of decisions. Munich, Germany: European Patent Office. 2:58 to 3:14 and 6:27 to 6:48 minutes in. Retrieved August 5, 2012.
  20. ↑ Rule 108 EPC
  21. ↑ Kevin Garnett QC (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 4: Deciding on petitions for review of decisions. Munich, Germany: European Patent Office. 2:50 to 2:56 minutes in. Retrieved August 5, 2012.
  22. ↑ Rule 110 EPC
  23. ↑ Rule 108(3) EPC and R 5/08
  24. ↑ EPO web site, Petitions for review under Art. 112a EPC, consulted on December 3, 2008.
  25. ↑ (French) Laurent Teyssedre, Premières requêtes en révision, Le blog du droit européen des brevets, July 6, 2008. Consulted on July 6, 2008.
  26. ↑ (French) Laurent Teyssedre, Premières décisions statuant sur des requêtes en révision, Le blog du droit européen des brevets, September 24, 2008. Consulted on September 30, 2008.
  27. ↑ Decision R 7/09 of the Enlarged Board of Appeal dated 22 July 2009

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