R 0004/18 - Withdrawing appeal and petition for review

Key points

• In this petition for review case after an examination appeal, (the patent attorney of) the applicant had withdrawn the appeal at the end of the oral proceedings before the Board. The applicant, now having another representative, regrets this, in particular, because in the divisional application the Examiner sees the refusal of the parent as res iudicata (if I understand this correctly).
• The petitioner submits that the minutes of the oral proceedings before the Board are to be seen as a decision, and hence that the petition is admissible. The petition also submits that the withdrawal of the appeal was invalid. 
• The EBA finds that the petitioner was validly represented during the oral proceedings before the Board, and concludes that the minutes are not a decision. The use of the word "conclusion"  in the minutes does not change this. Hence, there is no decision of the Board and the petition is clearly inadmissible.
• The applicant (not represented anymore by attorney) has filed a complaint letter after the decision of the Enlarged Board. 

Collusion between Representative 1 and the Board of Appeal

5. The Enlarged Board can find no evidence of collusion between Representative 1 and the Board of Appeal. As evidence of collusion the Petitioner has merely put forward its CEO’s criticism of Representative 1’s professional performance.

Are the minutes a decision?

6. Article 112a(1) EPC provides that 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.

7. Thus a prerequisite for a petition for review is the existence of a Board of Appeal decision. The Enlarged Board finds that “decision” in Articles 106 and 107 EPC has the same meaning as “decision” in Article 112a EPC.

8. According to the case law of the Boards, whether a document constitutes a decision depends upon the substance of its contents rather than its form (see e.g. J 0008/81, OJ 1982, 10, point 3).

9. The criterion of substance has to be assessed in the procedural context (see T 0713/02, OJ 2006, 267, point 2.1.4). In the present case the procedural context is that of an appeal proceedings that were ended by the withdrawal of the appeal by the sole appellant.

10. Another feature of a decision is that it involves a reasoned choice between legally viable alternatives (see T 0934/91, OJ 1994, 184, point 5). This is not the case for minutes of oral proceedings, and any correction thereof, the purpose of which is to reflect the course of the oral proceedings (see T 0231/99, points 1.1 and 1.2).

11. The consistent case law of the Boards of Appeal has been that the minutes of oral proceedings, and the correction thereof, are not decisions in the sense of Article 106 EPC (see T 0838/92, point 3; T 0212/97, point 2.2; T 0231/99, points 1.1 and 1.2; CLBA 8th edition 2016, IV.E.2.2.2(b)(viii)). That, in all these cases, a separate formal decision was issued does nothing to alter the conclusion that minutes are not considered to be a decision. The Enlarged Board also notes that in the present case, T 1712/15, the minutes did not terminate the proceedings (see point 7, page 10 of 22 of the Petitioner’s Reply): the proceedings were terminated by the appellant’s withdrawal of its appeal.

12. The key argument of the Petitioner is that the use of the word “conclusion” in the minutes makes the minutes into a decision on the issues upon which a conclusion had been made. Thus in the present case, if the Petitioner’s view were followed, the Board of Appeal made a decision that claim 1 of the Main Request and Auxiliary Requests 1 to 22 did not meet the requirement of Article 123(2) EPC. The Enlarged Board does not see how the use of “conclusion” instead of “preliminary view”, in the context of the minutes of an oral proceeding can transform these minutes into a decision. The Enlarged Board notes that the common practice of the Boards is to express views or conclusions on the substantive issues before them during the course of the oral proceedings. A decision on the case is then made at the end of the oral proceedings. As regards procedural issues, such as admittance of documents and claim requests, the Board necessarily makes decisions on such issues during the course of the oral proceedings. An example of such a decision (the word “decision” is used) is found on page 4 of the minutes. It concerns the decision not to admit Auxiliary Request 23. Other than this decision on the admissibility of a request containing a new claim 1, the minutes do not show that any other decision was made. In this case the appeal proceedings were terminated by the withdrawal of the appeal. This ended the suspensive effect of the appeal and the decision of the Examining Division became final (see G 0008/91, OJ EPO 1993, 346).

13. The Enlarged Board hence finds that there is no decision of the Board of Appeal in this case. The petition is thus inadmissible and the question of allowability does not arise.

Order

For these reasons it is decided that:

The petition for review is rejected as clearly inadmissible.