Key points
- This is the 10th successful petition for review. The petition was filed on 30.11.2021, written decision was issued on 29.11.2022.
- The applicant/appellant filed a withdrawal of the appeal on 28.09.2021 and filed a retraction of the withdrawal on 29.09.2021. A notice of closure of the appeal proceedings was issued on 01.10.2021. The appellant then substantiates the request of 29.09.2021 as a request for correction under Rule 139 with a letter of 05.10.2021 and receives a communication from the Registrar on 05.10.2021 stating that the proceedings are terminated. The appellant requested a decision on 15.11.2021 and filed a petition for review on 29.11.2021 against the communication of the Registrar of 05.10.2021.
- A divisional application was filed on 08.10.2021.
- The Enlarged Board: "The Enlarged Board of Appeal concurs with the petitioner that it is admissible to file a petition for review against the decision of the Board as communicated by the registrar on 5 October 2021. Determining whether there is a decision depends on the substance of the document content and not its form. The decisive question is whether the document at issue is to be understood by its addressee as a final determination of substantive or procedural issues by the competent organ of the EPO (see T 165/07).
- "The Enlarged Board interprets the Registrar's communication of 5 October 2021 as a decision in which the Board implicitly decided on the appeal [namely: "The appeal proceedings have come to an end and will not be re-opened"], while not deciding on the request for correction. A ruling of this kind would not normally be considered to be a decision within the meaning of the EPC. Even after such a determination, the proceedings may be resumed at any time if it transpires, for example, that the determination was made in error. However, in order to avoid gaps in legal protection, an exception must apply in the situation where a board of appeal expressly indicates that it considers the appeal proceedings to be closed and refuses to deal with the case further."
- Note that the EBA considers the communication of the Registrar as a decision taken by/on behalf of the Boards. See OJ EPO 2008, Supplement 1, 49:
- "The request for correction, i.e. the retraction of the withdrawal of the appeal filed after its withdrawal is a relevant request within the meaning of Rule 104(b) EPC for the purposes of Article 112a(2)(d) EPC. According to the case law of the Boards of Appeal on Rule 139 EPC (see Case Law of the Boards of Appeal of the EPO, 10**(th) edition 2022, V.A.7.3.7), the success of such a request cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible."
- "For this reason, the Enlarged Board holds that the Board's refusal to decide on the request for correction under Rule 139 EPC in the present case is a fundamental procedural defect within the meaning of Article 112a(2)(d) EPC [in conjunction with Rule 104(b), "decided on the appeal without deciding on a request relevant to that decision"], and the Enlarged Board holds that the petition is allowable."
- As the petition is allowable and the proceedings before the Board of Appeal must be reopened (Rule 108(3) EPC) the fee for the petition for review is to be reimbursed (Rule 110 EPC).
Reasons for the Decision
Admissibility of the petition
1. Article 112a(1) EPC reads:
"Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal."
The Enlarged Board of Appeal concurs with the petitioner that it is admissible to file a petition for review against the decision of the Board as communicated by the registrar on 5 October 2021.
Determining whether there is a decision depends on the substance of the document content and not its form. The decisive question is whether the document at issue is to be understood by its addressee as a final determination of substantive or procedural issues by the competent organ of the EPO (see T 165/07). Consequently, the content of the registrar's communication is implicitly:
The appeal proceedings have come to an end and will not be re-opened.
2. The petition meets the requirements with respect to the time limit and payment of the petition fee.
3. The petition is also admissible under Rule 106 EPC because an objection could not have been raised during the appeal proceedings.
Allowability of the petition
4. The petition is allowable.
Article 112a(2)(d), Rule 104(b) EPC
Rule 104 EPC reads in its relevant parts:
"A fundamental procedural defect under Article 112a, paragraph 2(d), may have occurred where the Board of Appeal,
(a)..., or
(b)decided on the appeal without deciding on a request relevant to that decision."
The Enlarged Board interprets the Registrar's communication of 5 October 2021 as a decision in which the Board implicitly decided on the appeal, while not deciding on the request for correction. A ruling of this kind would not normally be considered to be a decision within the meaning of the EPC. Even after such a determination, the proceedings may be resumed at any time if it transpires, for example, that the determination was made in error. However, in order to avoid gaps in legal protection, an exception must apply in the situation where a board of appeal expressly indicates that it considers the appeal proceedings to be closed and refuses to deal with the case further. The request for correction, i.e. the retraction of the withdrawal of the appeal filed after its withdrawal is a relevant request within the meaning of Rule 104(b) EPC for the purposes of Article 112a(2)(d) EPC. According to the case law of the Boards of Appeal on Rule 139 EPC (see Case Law of the Boards of Appeal of the EPO, 10**(th) edition 2022, V.A.7.3.7), the success of such a request cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible.
For this reason, the Enlarged Board holds that the Board's refusal to decide on the request for correction under Rule 139 EPC in the present case is a fundamental procedural defect within the meaning of Article 112a(2)(d) EPC, and the Enlarged Board holds that the petition is allowable.
The question whether this also constitutes a violation of Article 113 EPC that would fall under Article 112a (2)(c) EPC can be left open.
As the petition is allowable and the proceedings before the Board of Appeal must be reopened (Rule 108(3) EPC) the fee for the petition for review is to be reimbursed (Rule 110 EPC).
Order
For these reasons it is decided that:
The decision under review is set aside.
The proceedings before Technical Board of Appeal 3.5.03 are re-opened.
The fee for petition for review is reimbursed.
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