Applications for Petitions for Review at the EPO do not have a have a high success rate. Of the 105 currently-available Decisions relating to Petitions for Review, the vast majority have been found to be inadmissible; only four have resulted in a successful outcome for the applicant (i.e the decision under review being set aside) – R15/11, R21/11, R3/10 and R7/09, and one in a successful interim decision for the Petitioner, with the final decision still pending – R19/12, putting the current hit rate at just under 5 %.
Decision R19/12 issued in the last month or so, and makes for interesting reading. The Decision is only available in German – mine’s somewhat rusty, so there’s a (very!) crude machine translation here for anyone who is interested to see it*. It isn’t going to be affecting practice for any EPA’s, but it will have a significant impact on internal organisation at the EPO.
As well as taking a look at the reasons for the success-so-far of R19/12, this post will also delve a little deeper into the four successful Petitions to see how they come to succeed, and see what became of the patents after the proceedings were reopened…
The bar for Petitions for Review is set deliberately high. A Petition for Review is meant to serve as an extraordinary remedy when a fundamental procedural defect has occurred – something that the EPO would no doubt rush to tell us is a rare occurrence. As a practice point, it is worth remembering that the defect must have been objected to during the original proceedings (unless such an objection would not have been possible).
Article 112(a)(2) EPC lists the possible grounds for a Petition: in summary, these include partiality of a Board member, the Board including someone not appointed as a member of the Board of Appeal, a fundamental violation of Article 113 (the right to be heard), any other fundamental procedural defect defined in the Rules, or a criminal act occurred that may have impacted the decision.
The four successful Petitions (R15/11, R21/11, R3/10 and R7/09) relate to a fundamental violation of the right to be heard. R19/12 relates to partiality of a Board Member, and it is a surprising finding that will presumably be quite an organisational headache for the EPO.
The Decision under review was T2097/10, taken by the Technical Board of Appeal. On 14 December 2012, the Applicant filed a Petition for Review, on the basis of a violation of its fundamental right to be heard. The Applicant objected to the proposed composition of the Enlarged Board of Appeal based on a suspicion of bias of the Chairman of the Board [interestingly, several pages relating to the suspected bias appear to be redacted].
The Applicant had “no doubt about the high legal qualifications and personal integrity of the Chairman”, but suspected partiality on the grounds that the Chairman was a Vice President (VP3) of General Appeals (GD3), a member of the Management Committee of the President (MAC). The Applicant argued that the fact that the Chairman was sitting on the Board of Appeal, whilst also being involved in the administrative activities of the EPO at a high level, led to a conflict.
The Chairman was replaced, and the Board considered the Request.
The Board considered cases that had been decided by the European Court of Human Rights and the German Federal Constitutional Court and took the view from this that “the fact that a senior judge – such as the Chairman of the Enlarged Board of Appeal – has previously occupied a high position in an administrative hierarchy, not a sufficient reason, which alone justifies a suspicion of partiality for themselves.” [NB quotes are from the machine translation – any corrections or more accurate translations are welcome in the comments below!].
However, the Board also noted that there were differences between this case and those previously considered by the other courts: in particular, in this case, the Enlarged Board of Appeal member carried out his management duties, and was subject to the instructions of the President of the EPO, at the same time as being a member of the Enlarged Board of Appeal.
The Board concluded that “A sharp boundary is not drawn – and can not even be drawn… The VP3 may be faced with conflicting demands….which could affect the guaranteed in the EPC judicial independence of the Board members.”
The Board also noted that although it has become convention that the VP3 is a member of the Enlarged Board of Appeal, there is no requirement for this in the EPC, and convention alone is not sufficient to give the practice the standing of common law, and the possibility of bias could not be dismissed simply because the practice has become convention: “In view of the requirements for the guarantee of the impartiality of the judge in a court, the system can not be disregarded because it is one which occurs in the course of time. This can lead even to what is considered legal tradition or culture of a jurisdiction, to be considered critically today… The indispensable requirement of public confidence in the justice today requires a higher standard than this than has been the case previously. What was acceptable for many years, is not necessarily today.”
So the Board decided that the suspicion of partiality was justified. The question of whether or not there was indeed any partiality was irrelevant – the suspicion of partiality was sufficient, and so VP3 has been replaced on the Enlarged Board of Appeal.
The essence of the Board’s decision is pretty much this this: “A convention has arisen where the Vice Presidents of the EPO are Enlarged Board of Appeal Members. We used to think this was okay, but now we’ve realised it’s not. So, even though it will be a massive organisational pain-in-the-backside for the EPO, VPs can’t be Enlarged Board of Appeal members”.
It is interesting to compare this Decision with R2/12, a case in which suspicion of partiality of a board member was also alleged, and considered by the Board, but ultimately rejected.
A Petition for review was filed, and a preliminary decision and summons to Oral Proceedings was issued, indicating that the Board’s preliminary view was that the Petition was clearly inadmissible and unallowable. The preliminary view was signed by the Rapporteur. The Petitioner requested that the Rapporteur be excluded from the Board based on a suspicion of bias, because, in the Petitioner’s view, crucial arguments had been ignored, the Rapporteur seemed already to have made up her mind without waiting for Oral Proceedings, and she had indicated that the proceedings could be expected as only being “very close” to a fair trial (i.e. not guaranteeing a fair trial).
The Board found that there was no objective basis for a suspicion of impartiality. A Board member is presumed to act in good faith until proved otherwise (G2/08) and subjective opinions extracted from one particular reading of the wording of a Communication is not sufficient to prove otherwise. The Board therefore issued an interim decision in which the request for replacement of the Rapporteur was rejected.
These two successful Petitions are probably the most useful for practitioners to bear in mind. Both are examples of the procedure doing what it should do – restoring fairness where a party has been treated unfairly, and a fundamental procedural defect has occurred.
They are grouped together here because the issues involved are similar: both relate to situations where, during Oral Proceedings in front of the Technical Board of Appeal, the parties submitted oral arguments regarding what they thought was to be one specific issue of patentability, the Board subsequently adjourned to decide on that issue, and on resumption of the proceedings the Board took a decision in regard to all issues of patentability, not just the specific issue that had been discussed.
In both cases, the Petitioner had pointed out during those Appeal proceedings that there had been no opportunity to comment on all issues of patentability, and requested the opportunity to comment, but the Board had denied them that opportunity.
In R15/11, the patentability of an Auxiliary Request was under discussion. The Applicant had been invited to submit arguments first on novelty, and then on inventive step. The Board adjourned to decide on these issues. On resumption of the proceedings, the Board took a decision that the claims were not patentable as they lacked clarity. The Applicant, having not yet addressed clarity of the claims, attempted to address the clarity objection at this point, but was denied the opportunity by the Board, and the patent application was rejected.
In R3/10, in Oral proceedings, a large number of Requests were to be addressed in groups. The Opponent/Appellant first addressed novelty of the first set of requests. The Proprietor defended novelty of the first set of requests. On being asked if the parties had further comments, both replied ‘no’. The Board adjourned, and on its returned, decided that the requests were rejected as they lacked an inventive step. The proprietor objected that it had not been given the opportunity to comment on inventive step, but was denied the opportunity to do so. [Incidentally the case related to the processing of raw fish products, which I confess I found rather intriguing!].
In both cases, the parties adversely affected by the Decisions filed a Petition for Review. In both cases the petition was found to be allowable: the Decisions were set aside because they were based on issues on which the parties had not had an opportunity to comment.
This decision is also in German – Fortunately, this is the one successful Petition that appears in the EPO’s case law book, so I confess I am relying that here, my appetite for machine translations having been quashed by deciphering R19/12.
In this case, during Board of Appeal Proceedings, the proprietor had submitted a request by fax for admission of second expert testimony. The Board had issued its Decision on the appeal without ever deciding on whether or not to admit this expert testimony.
The Petition was deemed to be allowable: in failing to make a decision on the admission of the testimony the Proprietor had been denied its right to be heard. It is important to note that the Petition was not successful because the testimony had not been admitted – rather, it was successful because the Board had failed to consider whether or not it should be admitted. Whether or not this would have actually influenced the outcome of the proceedings was irrelevant: there was the potential for the failure to influence the outcome, and this was sufficient.
R7/09 relates to European patent number 0978251. Following opposition proceedings, in which the opposition was rejected, the opponent filed a Notice of Appeal against the Decision of the Opposition Board. The Proprietor received and acknowledged a notification of the Notice of Appeal. The Opponent followed up with the Grounds of Appeal within the required time frame. The EPO prepared a Notification for the Proprietor, setting a four month deadline for submitting comments, but (records would later show) the notification was never sent, and so never received by the Proprietor.
Having never received a copy of the Grounds of Appeal, the Proprietor did not file comments. The Opponent/Appellant had requested Oral Proceedings only as an Auxiliary Request and so the Board of Appeal took its Decision on the papers, without the need for Oral Proceedings, and revoked the patent. The Proprietor was notified of the Decision to revoke the patent in its entirety.
The Proprietor filed a Petition for Review, arguing that Proprietor had not been given an opportunity to be heard, contrary to Article 113 EPC.
The Board decided that, even though the grounds of Appeal and the Communication setting the deadline for response were available to the Proprietor through inspection of the public file, parties should be individually and specifically informed as prescribed in the EPC, and should be able to rely on the EPO carrying out the duties prescribed. The Proprietor had no duty to monitor the public file.
On this basis, the Petition for Review was upheld, and the decision was remitted to the Board of Appeal.
It is interesting to see the subsequent fates of these patents/applications, and whether these Petitions ultimately affected the outcome, or merely delayed the inevitable. The patents of R7/09, R21/11 and R3/10 were eventually revoked by the Board of Appeal in any case, so although the Petitions were successful, the fate of the patents were unaffected. R19/12 has of course just issued, so the proceedings are ongoing. R 15/11 is the only success story in the group. The register shows that although here has not yet been a 71(3) communication, a set of claims appears to have been agreed, and thanks to the successful Petition, a patent looks set to be granted.
So, that’s just 1 out of 105 decisions so far that has actually resulted in a different outcome for the Petitioner. Not a high hit-rate – but success is possible!
Emily Weal 5 June 2014
*As an aside, it seems unacceptable to me that Decision on Petitions for Review are only available in one EPO language. The successful ones at least should be available in all languages – there are so few of them that it wouldn’t be a significant burden.
Update – this post was updated on 6 June 2014 in light of the first comment below. As such there may be some variations compared to the text as originally published.