First published in BARDEHLE PAGENBERG IP Report 2008-V at

Judicial proceedings in the EPO consist of one single instance, the Boards of Appeal. The EPC 2000 has not changed this in general. However, it has introduced the petition for review as an extraordinary remedy if certain fundamental defects occurred in the appeal proceedings. It was to be expected that the most important ground for petitions will be that the petitioner submits that its right to be heard under Article 113 (1) EPC was violated.

This is what happened in petition R 1/08, the first petition filed under new Article 112a EPC. In the opposition proceedings underlying the petition, the Opposition Division had rejected the oppositions. In appeal proceedings, the Technical Board of Appeal concluded that the claimed subject-matter did not involve an inventive step and revoked the patent.

In its petition for review, the proprietor submitted that he had learned for the first time from the written decision of the Technical Board of Appeal that there were objections against inventive step of its auxiliary request filed one month before the oral proceedings. Since such objections had not been raised before, the proprietor had not been given the opportunity to comment on them. Thus, its right to be heard had been fundamentally violated.

In accordance with Rule 109 (2) a) EPC, the Enlarged Board of Appeal examined in its composition with 3 members whether the petition was clearly inadmissible or unallowable. In its decision, the Board holds that the petition fulfils the formal requirements of Rule 107 EPC, that the petitioner was unable to raise its objections in respect of the alleged procedural defects during oral proceedings before the Technical Board of Appeal and that the petitioner is adversely affected by the decision revoking the patent. From this, the Enlarged Board of Appeal concludes that the petition is admissible.

As to the allowability of the petition, the Enlarged Board of Appeal states that the proprietor was given the opportunity in oral proceedings to provide its arguments with respect to the inventive step of the subject-matter of the auxiliary request. Hence, the proprietor was not taken by surprise that the Technical Board of Appeal intended to deal with the merits of this request. When dealing with the request, the Technical Board of Appeal had sought to assess the contribution made by the added limiting feature to the subject-matter of the main request which up to this point had lacked inventive step. Such a classical approach could not be considered surprising.

No conclusion in favour of the applicant could be deduced from the fact that the auxiliary request was neither commented upon or objected to by the appellant/opponent who did not attend the oral proceedings, nor by the Technical Board of Appeal. The absence of any objections could not, by virtue of this fact alone, make the request allowable.

As a second ground of its petition, the proprietor submitted that the decision of the Technical Board of Appeal was not reasoned with respect to the auxiliary request. The Enlarged Board of Appeal left open whether Article 112a (2) EPC or Rule 104 EPC does at all foresee the possibility of review based on this point of law. Noting the petitioner's submissions that the reasoning was contradictory, the Enlarged Board of Appeal states that it is not its task to enter into the merits of the decision, i.e. the substantive assessment of inventiveness.

The petitioner also made the complaint that the Technical Board of Appeal had refused to consider its submissions related to further technical advantages of the claimed subject-matter on the ground that they were raised for the first time during oral proceedings in the absence of the opponent/appellant. This did not convince the Enlarged Board of Appeal, because it was clear from the context of the reasons of the decision under review that the alleged advantages were not considered for several reasons, inter alia because they had not been substantiated.

As a result, the Enlarged Board of Appeal held by unanimous decision in accordance with Rule 109 (2) a) EPC that the petition is clearly not allowable.

For a better understanding of the situation in the oral proceedings before the Technical Board of Appeal some details may be mentioned which are not recited in the summary of facts and submissions of R 1/08 but become only apparent when reading the decision under review. The only difference of the main request from the cited prior art was that the claimed pharmaceutical composition contains another alcohol as solvent. The auxiliary request indicates, as a further distinguishing feature, a percent in volume ratio for the alcohol. Taking into account that the Technical Board of Appeal followed the appellant in concluding that the main request did not involve any inventive step, the additional feature could confer inventiveness on the claimed subject-matter only if it was not an arbitrary limitation (see Case Law of the Boards of Appeal, 5th ed. 2006, I.D.8.1.3). Hence, the proprietor when making the amendment should have been aware that he had to show in which way the limitation contributed to the solution of a technical problem in case the main request was considered obvious. Having the floor in oral proceedings for the discussion of inventive step of the auxiliary request, he did have the opportunity to make any relevant submissions.

The case gives some information on the procedural handling of petitions for review. Although the examination on whether the petition is clearly inadmissible or unallowable takes place without the other parties, these are informed of the receipt of a petition for review and its rejection or its forwarding to the panel with the five members, as the case may be. Communications are not excluded but not obligatory (cf. Article 13 of the Rules of Procedure of the Enlarged Board of Appeal). In the reported case no communication was issued. Oral proceedings have to be held if requested. No request was made in the reported case. This may explain why it was possible to settle the case within some three months.


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