R 0011/21 - When to object under Rule 106?

Key points

• In my post about T1891/20, I raised the question whether "it make sense to raise an objection under Rule 106 after the Board orally announces "its decision not to admit the auxiliary request into the proceedings"? Can a Rule 106 objection be raised pre-emptively before the Board commits the (perceived) procedural defect?"
• The Enlarged Board in this decision gives a partial answer, by finding that "an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".
• "The petitioner [patentee] submitted that the non-admittance of the auxiliary requests [filed with letter] of 13 January 2021 into the proceedings constituted a first fundamental procedural defect."
• "Regarding compliance with Rule 106 EPC, the petitioner referred to page 15, paragraphs 3 to 5, of the letter dated 13 January 2021 [where] the [patentee] announced, "for merely precautionary reason", that it would challenge "any contrary decision [i.e. to hold the auxiliary request inadmissible]" by filing a petition for review according to Article 112a EPC."
• The Enlarged Board: "Under Rule 106 EPC, the objection has to be raised in respect of "the procedural defect" and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence. The purpose of Rule 106 EPC is to give the Board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it (see also Case Law of the Boards of Appeal, 10th edition 2022, "CLBA", V.B.3.6.1 and R 3/20, point 2.2.1 of the reasons). In other words, an objection cannot be formulated prematurely (see R 8/08, point 1.2.2 of the reasons; R 17/10, point 2.3 of the reasons; R 21/11, point 10 of the reasons)."
• "The statements on which the petitioner is relying were contained in the letter dated 13 January 2021, with which the new claim requests were filed and, hence, at a point in time at which the Board had not yet taken any steps concerning these claim requests."
• Note, this leaves open that it is sufficient to object if a Board had taken some step concerning the admissibility of the claim requests.
• "As far as the appeal procedure subsequent to the filing of the letter dated 13 January 2021 is concerned, there is nothing on file - neither in the petitioner's submissions before the Enlarged Board nor in the minutes of the oral proceedings before the Board - which would suggest that the petitioner made submissions which could qualify as an objection under Rule 106 EPC."
• "the petitioner has not submitted - nor was it apparent to the Enlarged Board - that an objection could not have been raised during the appeal proceedings, for instance at the oral proceedings before the Board."
• " it must be concluded that the requirements under Rule 106 EPC have not been met in relation to the asserted procedural defect concerning the non-admittance of the auxiliary requests of 13 January 2021. As regards this complaint, the petition is therefore clearly inadmissible."
•  Take away message: object, object, object; and repeat the objection all the time (until case law clarifies the right time to object).
  
  
• The petitioner also challenged the decision to hold the claim request inadmissible by arguing that the decision on that point was insufficiently reasoned, which in turn can qualify as a violation of the right to be heard. This 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/r210011eu1.html

Reasons for the Decision

Admissibility of the petition for review - objection

1. Pursuant to Rule 106 EPC a petition for review under Article 112a(2)(a) to (d) EPC is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board, except where such objection could not be raised during the appeal proceedings. Thus, meeting the requirements under Rule 106 EPC is a precondition for access to the petition for review, an extraordinary legal remedy against final decisions of the boards of appeal.

2. Where the petition for review is based on several procedural defects, the requirements under Rule 106 EPC must be met in relation to each of them and, consequently, be separately assessed by the Enlarged Board (see also R 8/17, point 4 of the reasons; R 12/14, point 6 of the reasons).

3. The petitioner submitted that the non-admittance of the auxiliary requests of 13 January 2021 into the proceedings constituted a first fundamental procedural defect.

3.1 Regarding compliance with Rule 106 EPC, the petitioner referred to page 15, paragraphs 3 to 5, of the letter dated 13 January 2021. In that passage, contained in the petitioner's submissions as to why the newly filed auxiliary requests should be admitted into the proceedings, the petitioner inter alia expressed the view that its right to be heard within the meaning of Article 113(1) EPC would be violated if the Board did not admit these auxiliary requests into the proceedings. In that passage, the petitioner also announced, "for merely precautionary reason", that it would challenge "any contrary decision" by filing a petition for review according to Article 112a EPC.

3.2 The Enlarged Board does not agree with the petitioner that, in making these statements, the petitioner has fulfilled the obligations under Rule 106 EPC.

3.3 Under Rule 106 EPC, the objection has to be raised in respect of "the procedural defect" and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence. The purpose of Rule 106 EPC is to give the Board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it (see also Case Law of the Boards of Appeal, 10th edition 2022, "CLBA", V.B.3.6.1 and R 3/20, point 2.2.1 of the reasons). In other words, an objection cannot be formulated prematurely (see R 8/08, point 1.2.2 of the reasons; R 17/10, point 2.3 of the reasons; R 21/11, point 10 of the reasons).

3.4 The statements on which the petitioner is relying were contained in the letter dated 13 January 2021, with which the new claim requests were filed and, hence, at a point in time at which the Board had not yet taken any steps concerning these claim requests.

3.5 As far as the appeal procedure subsequent to the filing of the letter dated 13 January 2021 is concerned, there is nothing on file - neither in the petitioner's submissions before the Enlarged Board nor in the minutes of the oral proceedings before the Board - which would suggest that the petitioner made submissions which could qualify as an objection under Rule 106 EPC.

3.6 In its arguments, the petitioner emphasised that it was clear from the wording "precautionary reason" that the objection had been formulated conditionally, drawing a parallel with the permissible filing of auxiliary claim requests or conditional procedural requests, objections or submissions in general.

3.7 This, however, does not change the fact that the petitioner is relying on statements which were submitted at too early a stage. The petitioner's reference to the filing of auxiliary claim requests or conditional submissions does also not assist its case; making such a request conditional might prevent it from being considered as submitted too late, but does not remedy a premature submission - at least in the context of Rule 106 EPC.

3.8 Moreover, the petitioner has not submitted - nor was it apparent to the Enlarged Board - that an objection could not have been raised during the appeal proceedings, for instance at the oral proceedings before the Board.

3.9 Consequently, it must be concluded that the requirements under Rule 106 EPC have not been met in relation to the asserted procedural defect concerning the non-admittance of the auxiliary requests of 13 January 2021. As regards this complaint, the petition is therefore clearly inadmissible.