Petitions to the EPO EBA, is the provision working?

In December 2007 a series of amendments were made to the European Patent Convention. These included the introduction of a provision allowing a party adversely affected at Appeal to petition for the referral of a case to the Enlarged Board of Appeal. There have been 16 such appeal decisions, five of which have been decided. Withers & Rogers are pleased to be involved in one of these rare proceedings.

The petition process is intended to be a judicial review and not a rehearing of the substantive issues, and so the petition may only be filed on the following grounds:

1. (a) a member of the Board had a personal interest in proceedings;

2. (b) the Board included a person not appointed as a member of the Boards of Appeal;

3. (c) a party was not given their right to be heard;

4. (d) a procedural defect occurred during the appeal proceedings (such as a failure to arrange an oral hearing which has been requested, or the failure to consider a request relevant to the decision); or

5. (e) a criminal act may have had an impact on the decision.

To date all petitions have been on ground (c) and/or ground (d).

It is interesting that grounds (a) to (d) may only be raised if an objection was raised during the Appeal proceedings and dismissed by the Board of Appeal, or if it was not possible to object at this time.  It appears that this provision will be interpreted strictly, and a failure to object specifically under the provisions of the petition on the day of the hearing has been the reason for the dismissal of one of the few cases decided.

The petition must be in the form of a reasoned statement, accompanied by a fee and must generally be filed within two months of receipt of the decision of the Board of Appeal.  Once filed, the Enlarged Board of Appeal will consider the case, cases clearly inadmissible or unallowable shall be dismissed.  The decision must be agreed by each of the three board members sitting at this stage.  If the petition is not rejected, the Board will enlarge itself to five and decide the case on its merits.

The first stage of the proceedings is held without reference to the parties to the appeal which did not file the Petition, and as such there is no opportunity for comment.  If the case is found to have merit, it will be remitted to the Board of Appeal for further consideration and the fee for petition refunded.  This first part of the process is currently taking around 4-6 months.

The majority of petitions have been filed by the Patentee (11 of 16); in many cases because the Technical Board of Appeal had refused to allow any further recasting of the claims or the filing of auxiliary requests towards the end of the hearing.  Common arguments in the petitions for these cases have been that the party was not given their right to be heard (ground (c)) and/or a procedural defect occurred because a request made was not considered (ground (d)).  To date, the Enlarged Board of Appeal have been unsympathetic to such arguments, reminding the petitioner/Patentee that claim amendments filed on the day of an oral hearing are filed “late” under European provisions and, as such, their admittance is at the discretion of the Technical Board.  It seems, therefore, that the filing of a petition will not provide a mechanism for reopening appeal proceedings so that new claims may be filed:  it also emphasises the importance of ensuring that a series of fallback positions  are filed in good time before the hearing.

The Enlarged Board have stressed that the process is intended for use only as an “extraordinary legal remedy” and as such the provisions governing the process will be interpreted narrowly.

Each of the five decisions thus far have been to reject the petition, either as inadmissible (grounds not properly raised) or unallowable (alleged breach not considered to have occurred).  Further, in each case where the Enlarged Board have issued a preliminary opinion, but no decision as yet, this has been in favour of rejecting the petition.  This is perhaps unsurprising as it is no doubt the European Patent Office’s intention that this provision be used only where the provisions of the European Patent Convention and the procedures of the Boards of Appeal have been seriously breached.

Clearly, where there has been a serious breach of European Patent Office procedure, the petition provision may be used to rectify this.  However, such occurrences are extremely rare, and there may be other uses of the provision.

As these petitions do not have suspensive effect, it is not possible to make use of them to buy an additional few months of “patent life”.  However, they do cause a period of uncertainty for the other party to the appeal proceedings, which can be particularly uncomfortable as the first stage of the review procedure does not make anyone, other than the requester, a party to the petition proceedings.  As such, unless the three-man Board believe that the case has merit, and allows the referral to the five-man Board, the party to the appeal proceedings who did not petition the Enlarged Board can do nothing but sit and wait for a decision.  It may be commercially desirable to create this situation, for instance where licence negotiations are ongoing.

It is also worth noting that the lack of suspensive effect results in third party rights accruing where they have in good faith used, or made serious and effective preparations to use the invention during any period where the patent was revoked.  These rights allow the third party to continue the use commenced without payment to the Patentee, and this provision may be of use to Opponents in cases where a Patentee files a petition.

At the present time, this provision is being tested, and it will be interesting to see how long it is, and what circumstances are required, before the Enlarged Board find in favour of the petitioner.

It is clear from our experience with his process that the Enlarged Board intend to construe the grounds for review extremely narrowly in order to discharge the filing of such provisions in all but the most serious of cases.  Whether the frequency with which petitions are filed reduces as time passes an the case law becomes more settled, or whether this provision will become the last bastion of a desperate party remains to be seen.

Joanna Westwood
Withers & Rogers LLP