R 0006/22 - How to object under Rule 106

Key points

• "The reasoned petition was filed on 18 February 2022" 
• The written decision was issued on 28 February 2024, i.e. after more than two years, by a panel of the Enlarged Board consisting of three members. I will leave the issue of the length of the procedure aside for now, but not because it is an unimportant issue.
•  Rule 106 provides that a petition for review "is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings"
• "Oral proceedings before the Board were held on 15 November 2021. The Board's contested decision was announced at the end. The minutes were posted on 19 November 2021 and do not contain any detail of the arguments relied on for the various discussed issues. For the purposes of the petition, the discussion of the main request and auxiliary request is relevant."
• Note, the parties are effectively prevented from keeping a proper record of the oral proceedings by the prohibition of sound recording. 
• "From the minutes it transpires that the issues of added subject-matter, novelty and inventive step for the main request and of the admittance of the auxiliary request were discussed without interruption. After the Board's deliberation on these issues, the Chair announced that the main request was novel but did not involve an inventive step, and that the Board did not admit the auxiliary request into the proceedings. This was followed by a discussion on apportionment of costs. "
• "The petition is essentially based on the two grounds that (1) the non-admittance of the auxiliary request constituted a violation of the right to be heard since the auxiliary request had been submitted in response to a new argument raised by the Board"
• The EBA: 'From the file it appeared that an objection under Rule 106 EPC had not been made when the Board announced that it would not be admitting the auxiliary request into the proceedings. Mere observations on the right to be heard did not qualify as an objection under Rule 106 EPC unless they were immediately and doubtlessly recognisable as such. "
• "An objection under Rule 106 EPC must be expressed by a party in such a form that a board is able to recognise immediately and without doubt that an objection under Rule 106 EPC is intended. An objection under Rule 106 EPC is in addition to and distinct from other statements, such as arguing or even protesting against the conduct of the proceedings or against an individual procedural finding."
• " It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings."
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• "[T]he [Enlarged] Board had no reason to assume that the petitioner's argument on the right to be heard was already a formal objection pursuant to Rule 106 EPC. A mere reference to the right to be heard does not immediately become an objection under Rule 106 EPC. It normally needs to be formulated after the alleged procedural irregularity and cannot be formulated prematurely; see R 14/11, Reasons 2.7 [] . For this reason alone, the Board did not have to assume in the course of the oral proceedings that the proprietor intended to make an objection under Rule 106 EPC, even if it did take note of the remark on the right to be heard during the discussion on the admittance."
• "It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings."
• Note, G 12/91 held that: "Where oral proceedings are held, the decision may be given orally. The decision becomes effective by virtue of its being pronounced. ... Once it has been pronounced ... the decision enters into force and cannot be amended, even by the department that issued it. " This holding should probably be understood in a nuanced sense for decisions on the admissibility of submissions announced in the course of the oral proceedings: they can be set aside by the Board in case of a persuasive objection under Rule 106 EPC

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/r220006eu1

Admissibility

1. The petition is reasoned, it was filed in a timely manner and the fee was paid (Rule 107(1) and (2) EPC). The petitioner is adversely affected by the decision.

First ground, requirement to raise an objection (Rule 106 EPC)

2. Pursuant to Rule 106 EPC, a petition for review based on a ground for petition under any of Articles 112a(2)(a) to (d) EPC is admissible only where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the board of appeal, except where such objection could not be raised during the appeal proceedings.

3. The Enlarged Board recognises that a valid objection under Rule 106 EPC need not contain a direct and explicit reference to that rule. As stated in decision R 18/12, Reasons 19, in determining whether the petitioner has complied with Rule 106 EPC, what matters is not the formal wording of the objection but its substance as it could be understood by the board. The question is not what the party may have intended subjectively, but how the party's statement could be understood objectively. In this respect the EBA points to the settled case law of the Enlarged Board of Appeal, namely that an objection under Rule 106 EPC must be expressed by a party in such a form that a board is able to recognise immediately and without doubt that an objection under Rule 106 EPC is intended. An objection under Rule 106 EPC is in addition to and distinct from other statements, such as arguing or even protesting against the conduct of the proceedings or against an individual procedural finding. See CLBA (10th edition, 2022), chapter V.B.3.6.2(a).

4. The Enlarged Board notes, in accordance with the case law, that the purpose of Rule 106 EPC is to give boards a chance to react immediately and appropriately by either removing the cause of the objection or dismissing it (R 04/08, Reasons 2.1). By ensuring that a board can correct errors before a final decision is taken, Rule 106 EPC also ensures that unnecessary petitions for review are avoided (R 18/12, Reasons 19). See also CLBA, supra, chapter V.B.3.6.1.

5. It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings.

6. Under the circumstances, the petitioner could and should have made an explicit objection under Rule 106 EPC, either by a direct reference to this rule or at least to Article 112a EPC, or by making a similar explicit statement from which the Board would have been able to recognise that the objection was not just any argument from the party but indeed one under Rule 106 EPC, expressly for the purposes of a petition for review. No such objection is apparent from the file.

7. The petitioner submits that the required objection was raised. According to its own submissions, during the discussion of the admittance of the auxiliary request, it made an unequivocal statement that failure to admit the request would be a violation of its right to be heard. This alone had to have been sufficient for the Board to recognise the objection as one under Rule 106 EPC.

8. The EBA disagrees. As set out above, the decisive criterion is whether the objection was made in such a way that the Board could immediately and without doubt recognise that the party intended to raise an objection under Rule 106 EPC. Even if the Board may have subjectively perceived that the proprietor's argument during the discussion on admittance was intended as an objection under Rule 106 EPC, the Board apparently did not consider the objection to have been effectively raised. It was certainly not recorded as such in the minutes, and it is also undisputed that Rule 106 EPC was not explicitly mentioned during the oral proceedings, either before or after the decision on the admittance.

9. Under the circumstances as apparent from the file, the Board had no reason to assume that the petitioner's argument on the right to be heard was already a formal objection pursuant to Rule 106 EPC. A mere reference to the right to be heard does not immediately become an objection under Rule 106 EPC. It normally needs to be formulated after the alleged procedural irregularity and cannot be formulated prematurely; see R 14/11, Reasons 2.7, also cited in the CLBA, chapter V.B.3.6.2(b). For this reason alone, the Board did not have to assume in the course of the oral proceedings that the proprietor intended to make an objection under Rule 106 EPC, even if it did take note of the remark on the right to be heard during the discussion on the admittance.

10. The EBA notes the petitioner's argument that the case law of the Enlarged Board requires the objection under Rule 106 EPC to be raised "in good time" in order to rectify the procedural defect. The EBA also acknowledges that decision R 1/14 cited by the petitioner allows for the conclusion that objections can and should be raised in certain cases where the procedural defect has not yet occurred but is foreseeable. However, decision R 1/14 concerned an objection where the procedural defect was the refusal to postpone oral proceedings and the objection had not been raised until the end of the oral proceedings. This meant that the oral proceedings could not be undone retroactively, in contrast to procedural decisions and conclusions by a board during oral proceedings, which can normally be reversed or otherwise corrected. Therefore, R 1/14 does not negate the case law according to which objections must normally be raised after the procedural defect. It is emphasised that the question in the present case is not whether there was the theoretical possibility of a premature objection as a matter of law, but whether the Board could have been expected to recognise the petitioner's argument as an objection under Rule 106 EPC, on the basis of the facts in their entirety.

No explicit reaction from the Board to the alleged objection

11. Under Rule 106 EPC, not only does the objection in respect of the procedural defect have to be raised during the appeal proceedings. The rule also foresees that the objection has to be dismissed by the board of appeal. If the board does not dismiss the objection, but corrects the procedural defect, the objection becomes moot and a petition can be avoided. Either way, in dismissing or allowing the objection, a board also demonstrates towards the party raising the objection that it also understood the objection as one under Rule 106 EPC.

12. The rule thus makes it clear that the board has an obligation to examine and decide on the objection, and still in the oral proceedings, once it recognised the objection as one under Rule 106 EPC. The EBA has no reason to believe that in the present case the Board was unaware of this obligation, nor has this been argued by the petitioner.

13. It is undisputed that there is no trace of any explicit dismissal of an objection in the file. This was also confirmed by the petitioner's statements made during the oral proceedings before the EBA, at which the petitioner stated in response to a question that the Board had not explicitly dismissed the objection. In the petitioner's view, the non-admittance of the auxiliary request had to be regarded as the dismissal of the objection for the purposes of Rule 106 EPC. It is also clear that the petitioner considered its single statement about the right to be heard as a recognisable objection, so that repeating or confirming it once more at the end of the oral proceedings was not necessary. In its letter of 5 May 2022 the petitioner stated the following (page 5, last lines): "However, the Board indicates that the Respondent did not raise any further objection after the deliberation of the Board. The Respondent considered it useless to repeat the objection after a decision was taken, but this should not be considered as a withdrawal of the objection". In short, the petitioner assumed that the Board took note of the objection and implicitly dismissed it.

14. The EBA finds this explanation of the events during the oral proceedings unconvincing. The circumstances of the case do not lead to the conclusion that this is the plausible explanation for the Board's lack of reaction to the alleged objection, i.e. that the Board itself must have considered the decision on non-admittance to be at the same time the formal reaction to the objection as required by Rule 106 EPC. It seems very unlikely that the Board would leave a recognisable objection within the meaning of Rule 106 EPC entirely without comment, let alone an explicit and separate decision. Nor does the decision not to admit the auxiliary request prove that the Board was aware of a formal objection. Other theoretical possibilities, such as the Board forgetting or deliberately refraining from reacting to the objection, would seem just as unlikely as the petitioner's version of events.

15. In the EBA's view, from the totality of the circumstances as presented by the petitioner - and even without taking into account the Board's observations and ancillary decision on the request for correction of the minutes - it seems much more likely that the Board did not take note of the objection and therefore did not react. In this way, the absence of any discernible reaction from the Board is a further indication that the Board could not perceive the right to be heard argument as a recognisable objection within the meaning of Rule 106 EPC.

16. The EBA holds that in a situation such as the present case, a diligent party should normally insist on a discernible response from the board. Failure to do so may leave the party with an indication that weighs against its case. This will normally corroborate the indication which may already arise from the lacking mentioning of the objection in the minutes. See also R 2/12 of 17 October 2012: "Not only when the chairperson confirms the final requests before closing the debate, but at any time when the Board is about to deliberate ... it is the duty of a party to check whether its objection to a fundamental procedural defect occurring during the oral proceedings has been recognised by the Board and will be dealt with" (Reasons 1.2.1).

17. In summary, the Enlarged Board concludes that the petitioner did not make a recognisable objection under Rule 106 EPC. The first ground must be rejected as clearly inadmissible under Rules 106 and 109(2)(a) EPC. Whether the non-admittance of the auxiliary request itself could constitute a valid ground for petition under Article 112a(2)(c) EPC need not be decided.

Second ground, ignored inventive step arguments and missing inventive step examination

18. The EBA is satisfied that the second ground for petition is admissible under Rules 106 and 109(2)(a) EPC. The EBA accepts that the petitioner could only have realised upon receipt of the written decision that it did not contain the reasons which the petitioner expected to address the question of inventive step over E3. In other words, the objection could not have been raised in the appeal proceedings.