R 0006/24 - (I) When to object under Rule 106

Key points

• The EBA holds that a petitioner was not required to raise an objection under Rule 106 with respect to certain grounds for the petition. This is, of course, highly interesting, even more so because the petitioner's complaint is not about surprise reasoning in the Board's decision, but on the Board's (alleged) failure to address certain arguments of the petitioner (opponent). 
• The EBA, in translation: " the petitioner [opponent] raises a total of seven essentially independent objections alleging a violation of her right to be heard, which are summarized under the following three "aspects": (1) The Chamber did not properly consider several arguments put forward by the applicant concerning the interpretation and disclosure of [certain claim features].  (2) The Board also failed to address certain arguments  [of the petitioner/ opponent] ..."
• The EBA finds the first two aspects admissible even without a corresponding Rule 106 EPC objection.
• "a [Rule 106 objection ]was not already prompted by the communication to the Board of Appeal pursuant to Article 15(1) RPBA".
• "a distinction must be made between procedural acts of the Board that are still pending and those that are demonstrably completed, such as a procedural measure or an admission decision that has a direct (procedurally relevant) legal consequence. An objection under Rule 106 EPC during the ongoing proceedings can only be expected for the latter."
• The EBA here seems to depart from R 17/23 (blog post).
• " The petitioner is correct in asserting that Article 113(1) EPC, and consequently also Article 112(2)(c) EPC, refers to the final decision on the merits by the body competent to decide the case, and not to its preliminary opinions. The petitioner is also correct in asserting that it is unreasonable to expect a party to raise a formal objection during the proceedings with regard to every single statement made by the Board, in the expectation that this objection will be reflected unchanged in the decision and perhaps serve as grounds for a petition for review. Such a practice unduly delays the proceedings, since the Board must not only take note of an objection under Rule 106 EPC, but also address and decide upon it [CLBA V.B.3.7.2.5] ... Therefore, the grounds for the application relating to the first two aspects are admissible with regard to Rule 106 EPC."
• Regarding 'decide upon it':  this follows from Rule 106: "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 ..." (see also R 6/22: the party raising the objection must also check if the Board explicitly dismisses it and if not, raise the objection more clearly). 
• The EBA does not explicitly apply these general statements to the facts of the case. This makes the decision difficult to understand. The TBA had, in the preliminary opinion, referred to Art. 13(2) RPBA in connection with any submissions the opponent wished to file afterwards. The opponent indeed filed a letter after the preliminary opinion. I understand that the arguments presented in that letter were (allegedly) not dealt with in the preliminary opinion. It may be inferred that since there was no decision to hold the letter inadmissible under Art. 13(2) RPBA, the opponent could assume that the TBA would consider the arguments in that letter on their merits in the written decision. 
• The EBA holds that Rule 106 objections are only required for procedural measures or admissibility decisions that have a direct (procedurally relevant) legal consequence (and not for any statements in the preliminary opinion).
• It remains to be seen how a TBA deals with a valid Rule 106 objection after the procedural decision has been announced during oral proceedings. May the TBA reverse the procedural decision?

 EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/r240006du1