Pending R 11/26 - swift handling

Key points

•  A very quick post to flag that this petition for review was filed on 07.09.2026. 
• The panel was established on 08.09.2026, and the notification of the commencement of the proceedings was issued on 09.09.2026.
• This makes for quite a change from past practice. 
•  To cite the Explanatory Remarks to the EPC 2000, Article 112a EPC, from OJ 2007 Special Edition 4 (link): 
• 12. "The possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties. "
• 18. "In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel of the Enlarged Board established under Article 22(2), second sentence, and Rule 109(2) EPC 2000 (see explanatory remark n° 4 to Article 22 EPC). "
• "The proceedings before this panel shall be as simple and short as possible."
• "Therefore, this body shall decide in written* summary proceedings without the involvement of other parties and on the basis of the petition (see Rule 109(3) EPC 2000). A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review." (* - but with oral proceedings on request; the text is imprecise on that point)

EPO 

The link to the decision is provided after the jump.

R 0014/25 and T 0345/24 - Punished for filing an AR

Key points

• The proprietor filed a new AR-1 during the oral proceedings before the Board. The earlier filed ARs moved "one down". The TBA did not admit the newly filed AR-1 (there were no exceptional circumstances, according to the TBA). Does this course of events affect the admissibility of the lower-ranking ARs?
• The TBA in case T 0345/24 held it did. "
• "Such a re-ranking is ... an amendment to the proprietor's appeal case and its admittance is at the discretion of the Board. Under such circumstances the Board's discretion is to be exercised in view of inter alia procedural economy (see Article 13(1) RPBA, last sentence)."
• The ARs at issue were filed with the SoG of the proprietor. The TBA decision does not indicate whether the ARs were decided on (and rejected) by the OD. 
• The TBA reasons that the re-ranking is a case amendment "due to the procedural effects of such a change, such as consideration of alternate subject-matter"
• Given that the AR was not admitted on procedural grounds, the subject-matter of new AR-1 was not examined on the merits.
• Claim 1 of new AR-1 includes a feature that was not recited in the older, lower-ranking requests. I note that new AR-1 was filed to address a successful objection of intermediate generalisation. 
• The Board then hold the ARs filed with the SoG inadmissible.
• So, if you have a supposedly safe AR (under Art. 12(2)), it may become inadmissible by the filing of another higher-ranking AR, according to this decision.
• A precedent that repeatedly shuffling the order of the requests can render the ARs inadmissible is T 0716/17. However, the present case is not about repeated reordering of requests. 
• See also T 0020/25, to be discussed soon.
• Regarding the petition for review, the EBA declines to review whether the re-ranking was indeed a case amendment, and hence declines to review whether the TBA had a discretionary power to hold the AR inadmissible. 
• "The EBA's review is restricted to the question of whether the petitioners had an opportunity to comment on the Board's qualification of [the old ARs] as an amendment [...]. ... The EBA's review cannot lead to a substantive examination through the back door of the criticised treatment of the [...] filing of new auxiliary request 1 by the Board which lead to the [TBA's] conclusion that the reranking of [the old ARs] was an amendment to the petitioners' case."
• Hence, the EBA does not review whether the reranking of the old ARs -  note, this means simply inserting one higher ranking AR - is a case amendment. 
• Compare R 10/24: "Because of the severity of the interference caused by the non-admission of amended submissions under the provisions of the RPBA, i.e. Articles 12 and 13 thereof, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is infringed, for example, also where such provisions are applied in a manifestly incorrect manner. " (translated headnote)
• I consider R 10/24 to be well reasoned. However, see also below for the context of the present case. 
  
  
• Having said all that, the patentee did not simply file new AR-1, but "filed a new auxiliary request 1 and stated that the other auxiliary requests would be withdrawn on the condition that this request be admitted". I could see why the Boards may wish to avoid any appearance of bargaining about requests. 
  
• Also, the Art. 123(2) issue for the MR was as follows: " Relative to claim 1 as filed, feature 1.3 has been introduced into the claim, in which the ADL is defined to be 'in contact with' the body-facing side of the absorbent core. The basis for this amendment was stated by the opposition division to be paragraph [0198] of the application as filed where, however, the ADL is disclosed to be 'in good contact with' the body-facing side of the absorbent core. The Board sees the omission of the qualifier 'good' to lack a direct and unambiguous basis in the application as filed." I can see how adding the term "good" could introduce questions of clarity (if the amendment is open to examination of clarity under G 3/14). 
• The TBA added, obiter, that all the old ARs seemed to suffer from the same Art. 123(2) issue as the main request. That seems entirely logical, given the procedural development of the case. In that event, the old ARs were not a response to the Art. 123(2) objection that was found prejudicial to the MR, and the proprietor's right to be heard to reply to that Art. 123(2) is not affected by the decision to not admit the old ARs, possibly. 

• EPO R 14/25

The link to the decision is provided after the jump.

R 0010/24 - Review of decision to hold inadmissible

Key points

• The EBA took some time to draft its decision (7 months), but the result does not disappoint.
• The petitioner complains of the TBA's decision to hold a submission inadmissible.
• The EBA, in the translated headnote: "Because of the severity of the interference caused by the non-admission of amended submissions under the provisions of the RPBA, i.e. Articles 12 and 13 thereof, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is infringed, for example, also where such provisions are applied in a manifestly incorrect manner. "
• On the admissibility:  "According to the petitioner, an objection concerning the first ground for review — procedural defects under ... Article 113(1) EPC... — could not have been raised during the oral proceedings before the Board of Appeal, since, following the rejection of the auxiliary request, the Board had been bound by that decision. In this respect, the petitioner relies on R 10/08 and R 3/10."
• "It was undisputed that a formal decision had been announced on the main request, which had prevented the Technical Board of Appeal from reopening the debate on that request when [if?] the objection [under Rule 106] was raised ( "als der Einwand erhoben worden sei")."
• According to the minutes, no objection under Rule 106 was raised. 
• "In R 3/10, at point 1.4.1, it was held as follows: since a Board of Appeal is bound by a substantive “decision” once it has been issued and can no longer rectify it subsequently, and since the purpose of the obligation to raise an objection under Rule 106 EPC is to give the Boards of Appeal the opportunity to remedy the defect before a decision is issued, an objection under the first alternative of Rule 106 EPC can no longer be validly raised after the decision has been issued (R 10/08 of 13 March 2009, point 3).
• "To the extent that the petitioner relies on decision R 3/10 as establishing an exception to the obligation to raise an objection under Rule 106 EPC, the EBA is inclined, in relation to the present case, not to dismiss the petition for review as manifestly inadmissible solely on account of the failure to raise such an objection." 
• The EBA appears to see a difference with point I.2.2 of  R 5/19.
• The EBA examines the case file in some detail and concludes that the opponent had raised the relevant objection in the appeal. Moreover, the objection was included in the OD's decision. Hence, the proprietor should have filed the responsive auxiliary request before the Board gave their preliminary opinion. 

• 
  

EPO R 10/24

R 0006/24 - (II) A difficult case for the EBA

Key points

• The petitioner complains that the TBA did not consider some of its arguments (which were not rejected as inadmissible), thereby violating its right to be heard. The petitioner points out that the written decision of the TBA did not specifically address the arguments. As such, that is correct. However, the question is whether the lack of specific written reasoning refuting the arguments demonstrates that the TBA did not consider those arguments.
• The EBA, in machine translation:  "21. The EBA agrees with the petitioner insofar as it is not immediately apparent from the decision whether and how the Chamber addressed the three arguments A to C. However, it appears that the Chamber at least took note of them from [point 3.1 of the grounds for the decision].
• [The EBA] does not share the [petitioner's] view that the mere omission of allegedly relevant arguments suggests that the party was denied its right to be heard. This view would ultimately force the Board to mention all of a party's arguments in its decision without exception. The deciding Board must primarily determine whether an argument is relevant to the decision. Nevertheless, the Board may take note of an argument and classify it as irrelevant, even if this classification is objectively erroneous. However, correcting such an error by the EBA through a request for review under Article 112a EPC would constitute impermissible substantive review of the decision.
• 23. On the other hand, the question arises: How can a party determine from a decision whether an argument deemed relevant to the decision was consciously or unconsciously ignored by the Board, or whether the Board examined it and deemed it irrelevant, if the argument is not mentioned at all (or at least not in an immediately apparent way)? This issue was also raised in the cited decision R 10/18 (see point 2.1.1.2 of the Reasons). 
• Ultimately, in that case, the Enlarged Board of Appeal examined the entire contested decision and concluded that, as a whole, it was clear that the Board had considered the arguments in question. The Enlarged Board of Appeal also noted that the Board's conclusion need not necessarily be substantively correct or comprehensible or understandable to the parties involved. In particular, it is not necessary to answer every argument of the parties (see point 2.1.2.3 of the Reasons: "Whether not answering the petitioner's essential arguments violates the right to be heard"). 
• This approach of the Enlarged Board of Appeal also appears appropriate in the present case in order to determine whether there has been a serious violation of the applicant's right to be heard."
• "The Enlarged Board of Appeal confirms the principle that parties do not have an unrestricted right to an exhaustive analysis of every single argument they put forward in support of their case. This is all the more true since it is a subjective assessment by the party whether an argument has been addressed and addressed sufficiently so that the party can understand without further difficulty why it was not accepted or considered. It follows that a party may have to accept that a decision contains no discernible reasons why an argument was not addressed further or perhaps not even mentioned. In this respect, the decision R 10/18 and the case law of the Enlarged Board of Appeal based on it are confirmed. The applicant's argument that the mere fact that an argument was not addressed or mentioned should lead to a successful request for review is rejected."

Limited but non-zero power to examine facts and merits

32. "However, this again leads to the question raised in point 23 of the communication of the Enlarged Board of Appeal cited above. An effective right must also be enforceable, and its enforcement must ultimately be capable of judicial review. The court must therefore be empowered to examine whether the right to be heard has been observed. The right to be heard enshrined in Article 113(1) EPC, and the derived right to have a party’s relevant arguments taken into account, can be perceived as effective rights only if, in review proceedings, the Enlarged Board of Appeal is able to examine not merely formally, but also effectively, whether those rights have been granted. It follows that the Enlarged Board of Appeal must, in principle, have the power to carry out such an effective examination. In other words, the possibility of an effective examination of the petition is also in the petitioner’s interest.

33. This raises the question of the permissible scope of the review. Even if it were limited to examining a rebuttable presumption, namely whether the right to be heard is to be regarded as having been observed unless the contrary is proven, the power must at least extend to examining the facts which, in the party’s view, have the potential to rebut that presumption. Where, in a particular case, a substantive assessment of a party’s submissions is indispensable for determining whether the party’s right to be heard was observed, the Enlarged Board of Appeal is also entitled to carry out such an assessment. It must be emphasised, however, that this finding by the Enlarged Board of Appeal has no formal legal effect confirming or setting aside the relevant decision-making of the Board. To that extent, the Enlarged Board of Appeal’s lack of power in this respect is not called into question (Case Law of the Boards of Appeal, V.B.3.5.3)."

• There is also a point about an argument that was, according to the other party, manifestly bound to fail and, for that reason, validly not expressly addressed in the TBA's written decision.
• The EBA, in point 43, citing from the EBA's preliminary opinion: "34. The question here arises as to what extent the Board of Appeal may and should examine the merits of an argument in order to determine whether it is manifestly unfounded and the Board could therefore leave it unanswered. Such power to examine the (at least prima facie) correctness of a party's submissions appears to contradict the fundamental prohibition against examining the correctness of the decision. However, if the EBA did not have such power, this would inevitably lead to the conclusion that it would have to find a violation of the right to be heard without exception if any objection were left unmentioned in the decision. The EBA considers this outcome untenable." (emphasis added)
• This means the EBA has competence to review whether an argument is manifestly bound to fail (on the merits). 

• 
  
• EPO 

The link to the decision is provided after the jump.

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.

R 16/23 - On the right to oral proceedings

Key points

• This is the 13th successful petition for review, by my count. 
• The EBA corrects J 6/22, wherein the LBA had intentionally denied oral proceedings (and had dismissed the appeal), despite a valid request for oral proceedings of the applicant, in a case with a request for re-establishment for the late filing of the statement of grounds.
• Moreover, even though the underlying case is unusual, the LBA's reasoning was, though extensive on the legal points, quite generic and indeed suitable for copy/past in other (re-establishment) cases, as a TBA did in T 1874/23.
• The written reasoning of the LBA to deny the appellant's right to oral proceedings was extensive, and relied essentially on a purported 'dynamic' interpretation of Article 116, referring to the "substantial yearly number of appeals being filed and a considerable workload for the boards. Furthermore, the timely adjudication of cases has become a matter of increased interest to the stakeholders in the system, while it remains a challenge for the boards to carry out their function of effec­tively brin­ging justice to all parties within a reaso­nable time frame."
• The EBA holds, in the headnote, that "As oral proceedings had been requested by the appellant-applicant in the event that an adverse decision on the request for re-establishment of rights and on the appeal were taken, the [Legal Board of Appeal] should have arranged for the holding of oral proceedings pursuant to Article 116(1) EPC before taking any such adverse decision.
• " The failure to arrange oral proceedings constitutes a fundamental procedural defect within the meaning of Article 112a(2)(d) and Rule 104(a) EPC since, as a result, the appellant-applicant did not have the opportunity to present the case orally on the decisive issues of re-establishment of rights and the admissibility of the appeal"
• The EBA: "The second consideration referred to in the decision under review relates to aspects such as a timely adjudication of cases and the creation of legal certainty.  These are indeed aspects of great importance. The starting point is, however, that they are to be taken into account within the legal framework as provided by the legislator. In the view of the Enlarged Board, they are not sufficient on their own to justify a dynamic interpretation that would limit the scope of application of Article 116(1) EPC in such a way that a right to oral proceedings could be balanced against them."
• In addition, "As already stated in decision T 383/87, Article 116(1) EPC guarantees the right of any party to request oral proceedings, i.e. to argue its case orally before the relevant instance of the EPO. This includes the right for the party requesting oral proceedings merely to present orally what it has already submitted in writing (see also R 3/10, Reasons 2.11 confirming T 125/89, Reasons 7), without having to fear that, if it does so, the deciding body will order a different apportionment of costs for that reason alone (see also T 125/89, Reasons 7; T 383/87, Reasons 9)."
  
• The EBA's reasoning is extensive and clear. I recommend reading the entire decision. 

• The successful petitions are now: R 16/23; R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links). See also the list here.

EPO 

The link to the decision is provided after the jump.

R 11/23 - A new clarity issue raised in the written decision

Key points

• This is the twelfth successful petition for review, by my count. The decision was already published in July 2025. The blog post was kept in stock for some time by oversight. 
• The successful petitions are now: R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links).
• The patent application was filed in 2004 (as a PCT application). The grant was in 2017 (!). EP Entry in 2005, first action from the Examining Division in 2010, second Communication in 206 - we are looking back at the dark ages of the EPO. The decision of the TBA was T0532/20. 
• "Specifically, the petitioner [proprietor] argues that there were two distinct clarity objections against claim 1 of auxiliary request 8: The alleged lack of clarity what "maintaining currents in an allowable range" meant (the "allowable current range objection") and the alleged lack of information on which components were to be protected by the protective circuit (the "unspecified components objection"). The petitioner acknowledges that it was heard in the context of the "allowable current range objection" but it asserts that it was confronted with the "unspecified components objection" [and the Board's negative finding on that point] when reading the written decision only. Referring to pertinent case law of the boards of appeal, the petitioner argues that Article 113 EPC particularly meant that a party shall not be surprised by previously undisclosed reasons and evidence when studying the decision (pages 2 and 3 of the petition). "
• "The Enlarged Board also does not see any clear indication that the "unspecified components objection" was raised implicitly, for example as an aspect of an overarching clarity objection. During the written appeal proceedings, an objection was made that the critical feature (as quoted above in point VI.) defined a result to be achieved ("a protective circuit for maintaining currents within an allowable range") but not the technical measure of how to achieve it"
• "The "allowable current range objection" and the "unspecified components objection" are the aspects of the overall clarity or "result to be achieved" objection against the critical issue which were discussed in the decision under review. The objections were addressed separately (Reasons points 7.4 and 7.5), with a different outcome. The Board's finding that the "unspecified components objection" was justified in view of Article 84 EPC ultimately led to the revocation of the patent even though the "allowable current range objection" was not justified in the Board's view."
• On the burden of proof of the petitioner to show that an issue was not discussed during the oral proceedings before the BoA: "Since the Enlarged Board has no power or ability to investigate further whether other facts or indications might suggest that the petitioner could be aware that the Board had doubts about the specific aspect of clarity (namely, the "unspecified component" issue), it has to rely on the parties' submissions in this respect. In the absence of any such indication it is not for the party alleging a breach of its right to be heard to prove that there were no such facts or indications (see R 15/11, Reasons point 5). Any doubts remaining on whether a decision under review is based upon facts and considerations on which the parties had an opportunity to comment must be solved to the affected party's benefit (see R 2/14, Reasons point 10.3.4)."
• "The "unspecified components objection" which had not been discussed during the appeal proceedings eventually was the reason for the Board's finding that the patent was invalid. The Enlarged Board concludes that a fundamental violation of Article 113(1) EPC occurred."

EPO 

The link to the decision can be found after the jump.

R 0012/21 - Justice delayed ...

Key points

• The petition for review is successful.
• The successful petitions are now: R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links).
• The issue is whether the TBA violated the proprietor's right to be heard by not admitting an auxiliary request under Art. 13(1) RPBA 2007 in decision T 0784/17 of 30.03.2021, more particularly, whether the proprietor was given a sufficient opportunity to comment on the admissibility of the request. 
• The TBA had based the non-admission on a lack of substantiation (Art. 12(2) RPBA 2007) and a lack of prima facie allowability.
• The TBA: "Die Kammer betrachtet den Sachvortrag der Beschwerdeführerin zu ihrem Hilfsantrag deshalb nicht als vollständig im Sinne von Artikel 12(2) VOBK 2007. Zudem kann sie nicht erkennen, dass der gegenüber dem Hauptantrag hinzugefügte Schritt des Abfliegens prima facie die Neuheit gegenüber D2 herstellt und damit dem Anspruch zu einer prima facie Gewährbarkeit als Zulassungskriterium unter Artikel 13(1) VOBK 2007 verhilft."
• The present decision in translation: "The petitioner argues that at the oral hearing, it was only permitted to comment on whether the written submission of March 5, 2020, met the requirements of a late submission. It was "only" permitted to comment on the question "why no additional reasoning was submitted regarding the content of the auxiliary request." The Board of Appeal discussed the substantive content of the subject-matter of claim 1 according to the auxiliary request in the decision, without allowing it to comment on it. It was therefore not heard on the novelty of the subject-matter of claim 1 of the auxiliary request."
• The EBA, in translation: "In light of all of the foregoing, the fact that the board did not expressly address the question of the prima facie novelty of the subject-matter of claim 1 of the auxiliary request during the debate [at the oral proceedings] on the exercise of its discretion to admit under Article 13(1) RPBA 2007 and did not allow arguments to be presented on that point constitutes a serious violation of the patent proprietor's right to be heard (Article 113(1) EPC). "
• The EBA also concludes that the issue could be decisive for the outcome of the appeal case, namely that if the petition had been heard, the request could have been admitted. 
• There are some interesting points, e.g. that the proprietor had an opportunity to comment during the written procedure, as well as that the EBA leaves open whether the TBA had prohibited the proprietor from discussing the prima facie relevance.
• The EBA: "Rather, in order for the Board of Appeal to have been able to rely on the prima facie lack of novelty of the subject-matter of the auxiliary request in its decision not to admit the auxiliary request, the applicant should have been given the opportunity to present its arguments on this point at the oral proceedings. In the present case, this would have required the Board to explicitly address the issue during the debate on the exercise of discretion regarding the admission of the auxiliary request, since the EBA has no indication that the opponents raised the issue of novelty during the debate on admission."
• So, what are the key points that can be applied in other cases?
• If a decision is based on two cumulative grounds (rather than on two independent grounds), a violation of the right to be heard regarding one of them vitiates the decision. 
• Compare e.g. the Board finding the claim to be unclear and lacking basis in the application as filed vs. a discretionary decision to not admit a request referring to the late filing and the lack of prima facie relevance. I note that for discretionary decisions, it is less easy to see how there can be independent grounds as the exercise of discretion normally is to be based on the consideration of all factors (see e.g. Art. 12(4) RPBA).
• As I understand it, the opponents did not contest the prima facie allowability of the AR (the opponent did not challenge that the amendment made the claim novel), so the board introduced the issue on its own motion. The board should therefore have invited the proprietor to comment. In other words, for an amendment that adds a feature with the purpose of making the claim novel (e.g. for Art. 54(3) EPC), prima facie allowability must be assumed unless the opponent contests this. Note that this may be different for an amendment that aims to make the claim novel and inventive. 
  
  

On the length of the procedure

• The petition for review was filed on 12.07.2021. The current decision was issued on 25.04.2025; the procedure took approximately 4 years, i.e. 20% of the patent term.
• As far as I know,  (the management of) the Boards have, remarkably, never set a target for the pendency of petition for review cases.
• On the same day, the decision in R 8/22 was published, where the petition was rejected as clearly unallowable. The petition for review was filed on 01.04.2022 (basically after the COVID-19 disruptions). Apart from the language of the proceedings being French, I see no special reasons why it took three years to decide on the petition.
• Just to say the evident: three years of additional 'pendency' in itself can be interesting for parties in certain cases. 
• Four petitions from 2022 are still pending out of the 25 filed in that year.  Six were withdrawn. Two were decided in 2022, eight in 2022, four in 2024, and one in 2025.
• One petition filed in 2021 is still pending. Seven were decided in 2022 (including the one successful petition, five in 2022, one in 2024, and one in 2025.
• Of the 18 petitions filed in 2023, twelve are still pending, five were rejected as clearly inadmissible or clearly unallowable, and one was withdrawn. 

EPO 

The link to the decision can be found after the jump.

R 0003/22 - Successful petition for review

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)  and the fee for the petition for review is to be reimbursed (Rule 110 EPC).

The successful petitions are now: R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13.

 

EPO 

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

R 0005/19 - Successful petition for review

Key points

• This is the 9th successful petition for review.
• The impugned appeal decision T 2378/13 is set aside.
• The TBA 3.5.02 had - very remarkably - held (in translation) that the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the appellants' allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent/appellant] made attacks using the problem-solution approach, which the board acknowledged." The board found that claim 1 was inventive in view of the considered inventive step attacks.
• The opponent/appellant filed a petition for review.
• The Enlarged Board finds that the underlined part is a surprise decision of the TBA. 
• “Damit beruht die Entscheidung auf einem Grund, zu welchem sich die Einsprechende vor deren Kenntnisnahme nicht äußern konnte. Der Grund lautet: Ausführungen ohne Verwendung des Aufgabe-Lösungs-Ansatzes können nicht berücksichtigt werden. ... Der neue Grund war nicht vorhersehbar, da die Beschwerdekammer ihn - wie oben ausgeführt - nie genannt hatte. Die Kammer wäre verpflichtet gewesen, der Antragstellerin vor Erlass der Entscheidung Gelegenheit zur Stellungnahme zu dem Grund zu geben.”
The Enlarged Board does not expressly comment on the merits of the TBA's reasoning. The Enlarged Board notes however that its preliminary opinion included the preliminary view that the reason could not have been foreseen, in particular, because it had never been invoked by a Board (" insbesondere weil er noch nie von einer Kammer herangezogen worden sei")



• Although not discussed at all in the present decision, and not explained in T 2378/13 at all, I personally do not exclude that the TBA in T2378/13 was of the view that the opponent was obliged to choose one and only one document as the closest prior art for inventive step and that the Board was of the view that holding the inventive step attacks inadmissible was a proper sanction for the opponent not making such a choice for one and only one CPA document.  But let's see what the TBA does after the remittal. 

• An important remark about the nature of oral proceedings before the Board: “The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part. This principle arises from the procedural rules for appeal proceedings in the EPC, in particular its Article 108 and Rule 99 (3) in conjunction with Rule 35 (1) and Rule 50 (3), as well as the Rules of Procedure of the Boards of Appeal (VOBK), in particular Articles 12 and 13 thereof 13. Oral proceedings in accordance with Article 15 RPBA usually conclude the procedure.”
• Hence, there is generally no obligation to expressly repeat all arguments made in writing.
• As to the issue of possible waiver of arguments by not repeating them during the hearing: “With regard to the defendant's assumption of an implicit (tacit, implied) waiver of written submissions due to the fact that it was not mentioned at the hearing, strict requirements would have to be made in view of the principle of the written form of the proceedings. An implicit waiver would be conceivable, for example, if statements in writing or during the oral hearing contradict previous written statements. In the event of doubt, it would then be incumbent on the Board to ask questions to clarify which submissions should currently be based on the case. However, there are no indications for this.” 
• Hence, not repeating arguments in the oral proceedings is generally no implicit waiver of arguments presented in the written submissions in appeal.
• However, procedurally, any violation of this rule by a Board of Appeal would require a petition for review, and there is, as far as I know, no settled case-law of the EBA that the petition will be successful in such cases.

The successful petitions are now: R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13.

R 5/19 

https://www.epo.org/law-practice/case-law-appeals/recent/r190005du1.html

Translation

Facts and submissions

[The following statements are taken verbatim from Part A of the notice of summons.]

I. The opponent's (applicant) request for review - submitted by a professional representative - is directed against the decision of the Technical Board of Appeal 3.5.02 in appeal case T 2378/13. In this case, the opponent filed an appeal against the interlocutory decision of the opposition division, with which it maintained European patent No. 2 091 029 in amended form on the basis of the main request at the time. The opponent had requested that the contested decision be set aside and the European patent revoked. With the decision under review, the Board of Appeal overturned the decision of the opposition division. She referred the matter back to the opposition division with the order that maintains the patent as amended on the basis of the claims of the new main request of April 1, 2019 and a description that has yet to be adapted.

The decision was announced at the oral hearing on April 1, 2019, and the written decision with reasons for the decision was posted to the parties on April 24, 2019.

The name of the invention is:

Hazard detection with the inclusion of a temperature measuring device integrated in a microcontroller.

R 0007/17 - Petition for review

Key points

• This petition for review was filed 14.09.2017. The written decision was issued 16.12.2019. The petition for review "is unanimously rejected as clearly unallowable".
• To cite OJ 2007 SE 4 En p.130, “In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel []. The proceedings before this panel shall be as simple and short as possible.” “A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review.”
• I leave it to the judgement of the readers whether a two years procedure is a "quick" screening procedure. Let me observe that the application was filed in 2010, so that the "lifetime" of the patent was increased by roughly 30% by the petition for review procedure (from 7 to 9 years). Calculated from the grant of the patent in 2012, the increase was 40%.
• The decision contains a remark about the importance of the Technical Board asking for the parties' final requests: "When the chairman summarised the patent proprietor’s requests, not including auxiliary requests 5 to 8, he made clear that these requests did not form part of the appeal proceedings. The chairman then asked the parties if they had any further comments or requests. According to the minutes of the oral proceedings, there were none. At least at that time, the patent proprietor could have answered this question by filing additional auxiliary requests. It did not submit any." 

EPO R 0007/17 - link

Summary of Facts and Submissions

I. The petition for review concerns decision T 0360/15 of Technical Board of Appeal 3.2.01 of 17 May 2017 and despatched on 5 July 2017, revoking European patent No. 2298640.

II. The petition for review was filed by the patent proprietor (hereinafter “the petitioner”) on 14 September 2017. The corresponding fee was paid on the same day.

III. The petition is based on the grounds under Article 112a(2)(c) EPC that a fundamental violation of Article 113 EPC occurred in the appeal proceedings.

IV. In a communication accompanying the summons to oral proceedings dated 8 March 2019, the Enlarged Board expressed its provisional and non-binding opinion that no fundamental violation of the right to be heard occurred and that it intended to consider the petition for review at least in part clearly inadmissible and in any case clearly unallowable.

V. Oral proceedings were held on 13 June 2019.

...

R 0007/18 - Cancelled flights and the Enlarged Board

Key points

• " VII. Oral Proceedings before the Enlarged Board of Appeal were scheduled to start at 10:30 on 4 February 2019. After no representative of the petitioner was present at 10:30 and taking into account that travel conditions might be difficult due to bad weather, the registrar of the Enlarged Board undertook enquiries with the office of the petitioner's representative. The start of the oral proceedings was delayed to allow said enquiries." 
• " VIII. The Enlarged Board then took note of a telefax letter sent by an employee of [the professional representative's] office [a large patent attorney firm in The Netherlands), which contained the information that [the professional representative] would not attend the hearing taking place on 4 February 2019 at 10:30 am due to cancelled flights [presumably this fax] . The telefax letter did not contain any request for postponement of the oral proceedings. The information given in the telefax letter was also obtained in two telephone conversations between the registrar of the Enlarged Board and two employees of the representative's office, Ms [X1] and Mr [X2]. The Enlarged Board then decided that the oral proceedings would take place in the absence of the petitioner's representative and started the oral proceedings at 12:30.
• The petition for review was unanimously rejected as being clearly inadmissible during the oral proceedings on 04.02.2019.
• The petitioner sent a letter about the oral proceedings taking place in his absence on 25.02.2019 explaining that on Sunday 3 Feb there was heavy snow and "the flight was cancelled" from Turin to Munich (by the airline I understand). The next flight on Monday 4 Feb at 6AM the next flight was also cancelled. Furthermore, the Registrar of the Enlarged Board Mr. C had retired on 31.01.2019 and the representative could not contact anyone of the Enlarged Board by phone. At the same time, his assistant Ms. X1 sent faxes to the Enlarged Board, the representative could not see the content of these faxes. The first time his assistant could reach someone of the Enlarged Board by phone was about 13:14 when the decision had already been taken (still according to the petitioner's letter).
• The fax of the assistant Ms. X1 of 09:24 stated in the entire relevant part: "Mr. [professional representative] will not the below hearing due to cancelled flights" (leaving open who had cancelled the flights).
• The Registrar issued a Communication on 10.04.2019 informing the petitioner that the email (p.2 of the PDF) of the representative to the Registrar Mr.C of 4 Feb 07:53 a.m. (mentioning 'events have conspired to prevent my arrival in Haar today' and 'my flight ... is cancelled') had no effect firstly because Mr.C had retired on 31.01 and secondly because email has no legal force, recalling that 'urgent queries or communications should, therefore, be sent by fax only, referring tot he Notice OJ 200 p.458) (Interesting to note that  this Notice still has legal force as long as fax is not yet abolished). The Communication refers to phone calls with the assistants Ms.X1 and Mr.X2 on 10:45, 11:23 and indicates that the decision of the Enlarged Board becomes formally res judicata 'as soon as it was pronounced public oral proceedings'. The Communication acknowledges the petitioner's request for interruption under Rule 142(1)and then gives some reasoning - of the Registrar of the Enlarged Board.
•  On 06.05.2019, the petitioner sent a further letter requesting in essence re-opening of the proceedings invoking inter alia interruption under Rule 142.  The written decision of the Enlarged Board was notified on 19.06.2019. With a letter of 10.07.2019 the petitioner formally requests interruption under Rule 142. With a letter of 25.07.2019, the Legal Division informs the petition that 'all proceedings before the EPO concerning [the patent] have been completed" and that the EBA has already dealt with the request in the Communication of 10.04.2019. On 06.08.2019, the petitioner files a further letter requesting for a decision on the interruption by the Legal Division itself (I don't understand the point fully, the letter of 25.07.2019 is signed by a lawyer of the EPO). 
• As a comment, under recent decision T 54/17 the Enlarged Board itself appears competent to decide on interruption under Rule 142 caused by events occurring during the petition for review procedure.

EPO R 0007/18 - link

[text omitted; the relevant part is cited above].

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.

T 1627b/09 - After successful petition

Key points

• This is a second decision in this case, after the successful petition for Review R2/14 setting aside the first decision T 1627/09 of 10 October 2013 dismissing the patentee's appeal against the OD's decision revoking the patent (of 14.06.2009), mention of the grant of 14.02.2017.
• In R 2/14 (decision issued 29.06.2016), the Enlarged Board had held (after finding a violation of Art. 113(1) EPC), that  "No request for replacement of the members of the board under Rule 108(3), second sentence, EPC has been made by the petitioner, nor does the Enlarged Board see any reason to deviate from the general principle that the proceedings are re-opened before the board of appeal responsible under the business distribution scheme".
• The two Board members taking part in the decision of 10 October 2013 and still being in function, now gave a notice of self-recusation. "They held that, if they remained as members of the board, they would have to decide for a second time on the same issues. In order to avoid a potential perception of bias, they requested to step out of the board and to be replaced by their alternates." These notices are not part of the public file, but seem to be given in November 2017. 
• The Board, in alternate composition, accepts the notices of self-recusation and decides that the chair and legal member are replaced by their alternates.
• " For a notice of self-recusation under Article 24(2) EPC to be accepted, it is therefore not necessary - as is the case for objections raised under Article 24(3) EPC, first sentence - to establish an actual partiality. It is sufficient that an appearance of partiality is at least arguable in the circumstances of the case" 

T 1627b/09 - link

Reasons for the Decision

1. Members of a board of appeal may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal (Article 24(1) EPC). If, for one of these reasons, or for any other reason, a member of a Board of Appeal considers that he/she should not take part in an appeal, he/she shall inform the Board accordingly (Article 24(2) EPC).

2. In view of the notices of self-recusation of the chair and the legal member who formed part of the board in decision T 1627/09 of 10 October 2013, the present board, in which the members concerned have been replaced by their alternates, has to decide on the action to be taken (Article 24(4) EPC).

R 0008/17 - No need to deal with written argument

Key points

• From now on, I will also discuss unsuccessful petitions for review cases, if they are interesting because of the guidance they give to the procedural framework of the appeal proceedings. 
• In reviewed decision T 1477/15, the Board had found the subject-matter at issue to be inventive (by the way, it was the third decision in the same opposition, after T 468/09 and T 801/13). 
• " One of the petitioner’s [opponent's] complaints is that the written arguments on documents D2 and D4 as closest prior art were not reflected in the written reasons and thus ignored by the Board. This amounted to a fundamental violation of its right to be heard." 
• The Enlarged Board: " The Board [BoA] explained in some detail in the written decision why it did not allow a discussion on documents D2 and D4 as possible starting points for assessing inventive step in the second oral proceedings. [The complaint against that decision regarding the oral proceedings, was already found inadmissible] It can therefore not be assumed that the position the Board took on this procedural issue was incorrect. Viewed from that perspective, the Board cannot be criticised for not considering any further the petitioner’s written submissions on D2 and D4 as closest prior art. Indeed, it would have been highly questionable and contradictory to deal in substance with an argument of a party in the written reasons after not allowing a discussion on it in the oral proceedings. The procedural situation in the present case differed from the situation where arguments of a non-attending party are not reflected in the decision." 
• Contrast this with the statement that "Taken as a whole, the RPBA make it clear that appeal proceedings are primarily written in nature"  (CLBA IV.E.4.2.4). 
• As a further comment, the Court of Appeal The Hague found the subject-matter to be obvious  with D4  (Rodsten) as the closest prior art (ECLI:NL:GHDHA:2018:513, paras. 2.15,  4.10, 4.22 and 4.25). 

R 0008/17  - link

26. One of the petitioner’s complaints is that the written arguments on documents D2 and D4 as closest prior art were not reflected in the written reasons and thus ignored by the Board. This amounted to a fundamental violation of its right to be heard.

27. As already summarised (see section IV(a) and point 22 above), the Board explained in some detail in the written decision why it did not allow a discussion on documents D2 and D4 as possible starting points for assessing inventive step in the second oral proceedings. It is not a matter for the Enlarged Board to review the merits of the petitioner’s complaint concerning the non-allowance of the discussion as such, since the petition is regarded as inadmissible in that respect (see point 13 above). It can therefore not be assumed that the position the Board took on this procedural issue was incorrect. Viewed from that perspective, the Board cannot be criticised for not considering any further the petitioner’s written submissions on D2 and D4 as closest prior art. Indeed, it would have been highly questionable and contradictory to deal in substance with an argument of a party in the written reasons after not allowing a discussion on it in the oral proceedings. The procedural situation in the present case differed from the situation where arguments of a non-attending party are not reflected in the decision.

R 0004/17 - Successful petition for review

Key points

• This is the sixth eight successful petition for review. 
• The petitioner (respondent in appeal) submitted that it had only learned about the appeal with the appeal decision. The petitioner submitted that it had not received the EPO's Communication about the Notice of appeal, Statement of grounds, and a further communication about a letter of the appellant (with some supporting evidence from their docketing system). The EPO has no proof that the letters at issue had "reached its destination" (Rule 126(2) EPC). 
• Hence the right to be heard is violated. The appeal decision is set aside.
• It could have been hoped for that after R 0007/09, the Boards would not issue decision without contacting the non-responding party, e.g. the register making a phone call to the first instance representative. 
• The successful petitions are now: R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 and R 16/13

EPO R 0004/17 - link

Summary of Facts and Submissions

I. The Opposition Division rejected the opposition against the patent in suit and maintained the patent as granted.

II. The Opponent appealed and requested that the decision of the Opposition Division be set aside and that the patent be revoked. The appeal case was assigned to Board of Appeal 3.3.03 with the case number T 1277/12.

III. Under cover of a registered letter dated 11 June 2012 the Board of Appeal sent the notice of appeal to the Respondent-Proprietor. Under cover of a registered letter dated 7 August 2012 the statement of the grounds of appeal was sent to the Respondent-Proprietor. The Board of Appeal sent a further letter of the Opponent-Appellant to the Respondent-Proprietor under cover of a registered letter dated 23 August 2012. These three registered letters were all sent without advice of delivery. No reply to any of these letters was filed by the Respondent-Proprietor.

VI. The Board of Appeal neither issued a communication nor summoned the parties to oral proceedings before it. In the light of the lack of response from the Respondent-Proprietor, the Board of Appeal considered itself to be in a position to issue a decision revoking the patent without the need to hold oral proceedings.

V. The decision of Board of Appeal 3.3.03 in case T 1277/12 was sent to the parties under cover of a registered letter with advice of delivery dated 12 April 2017. It is this decision that is the subject of the petition for review.

VI. The Respondent-Proprietor, (henceforth the “Petitioner”), filed a petition for review of decision T 1277/12. The basis for this petition is that, in the Petitioner’s view, a fundamental violation of its right to be heard had taken place – Article 112a(2)(c) EPC and Article 113(1) EPC.

VII. The Petitioner argued that it had no record of ever having received the letters referred to in point III above and that it had no knowledge of the existence of the appeal until it received the decision in the appeal case (see point V above). As a consequence of this the Petitioner was unable to exercise its right to be heard and it had been obviously impossible for it to raise this objection during the appeal proceedings, Rule 106 EPC. Thus the Petitioner was not given the opportunity to be heard in those proceedings, contrary to Article 113(1) EPC, so that the requirement of Article 112a(2)(c) EPC was met.

R 0002/14 - Reasoned decision and right to be heard

Key points

• The Enlarged Board has allowed a petition for review.
• The case is interesting in that what seems to be a lack of reasoning of the Board concerning the critical reason for (dismissing the appeal against) revoking the patent in the written decision, is dealt with as a violation of the right to be heard. The Enlarged Board states that " Either: [it]  cannot establish that the reasons for the decision under review are based on facts (and on what facts) and considerations (and on what considerations) on which the parties to the appeal proceedings, [] had an opportunity to comment. Or: In the event that the parties had been given an opportunity to comment, the Enlarged Board cannot establish that the parties’ relevant submissions and arguments were considered and fully taken into account when taking the decision."

EPO R 0002/14  ( EPO R 2/14) - link

Reasons for the Decision

Allowability

5. The petitioner essentially invokes the ground of petition according to Articles 112a(2)(c) and 113(1) EPC.

10. The second complaint

10.1 Regarding the second complaint, the petitioner argued

(a) that, insofar comparable to the situation underlying decision R 16/13 (supra), the board had based the decision under review on a ground that it introduced into the written reasons ex officio and without prior discussion with the parties and

(b) that the reasoning of the board was restricted to a mere statement of legal conclusions rather than a discussion of facts previously discussed by and/or with the parties, i.e. that the board failed to reason its conclusion that the person skilled in the art might have performed each of the steps necessary for recloning but that the combination of all the necessary steps would create an undue burden on the skilled person trying to perform the invention.

R 0009/14 - Summary of problem-solution approach

EPO R 9/14 
For the decision, click here. (For the appeal decision under review T 2044/09, see here)

Key points

• The Enlarged Board (three-member panel) gives a useful and concise summary of the problem-solution approach in this petition-for-review case (with minor edits in italics):
  
  It is established board of appeal case law that inventive step is to be examined using the problem-solution approach. That means first determining the closest prior art. Then the technical problem vis-à-vis the closest prior art that has been effectively solved is determined. If it is established that the claimed subject-matter has a technical effect or improvement compared with the closest prior art - which is usually shown by means of comparative tests - the problem solved [i.e., the objective technical problem] may be formulated in terms of [how to modify the closest prior art to obtain] the effect/improvement. If no effect is identifiable, the problem solved may be formulated in terms of [providing] an alternative to the closest prior art. Finally, it is examined whether the technical features claimed, which achieve the results, i.e. solve the technical problem, are an obvious solution given the information contained in the prior art.

Further main points

• Regarding the alleged procedural violation, the OD had maintained the patent as granted. The opponent-appellant did not attend oral proceedings, the Board had issued no preliminary opinion and only said "please present your case" and asked about comparative tests. The patent was revoked for lack of inventive step. I can imagine the patentee was disappointed. Nevertheless, the EBA approves of this course of events (edit 10.10.2019)
• The EBA also states that "the petitioner was unable to submit comparative tests vis-à-vis the closest prior art when asked by the chairman. And as patent proprietor, the petitioner – not the Board, as it seems to think – bore the burden of proof." In my opinion, the opponent-appellant  initially has the burden of proof to show lack of technical effect or at least cast reasonable doubt on the alleged effect T1797/09), even if he is absent during oral proceedings. The issue may have been how to Board should have proceeded after deciding to shift the burden of proof to the patentee: some time for the patentee to carry out the experiments would be reasonable. Otherwise, the whole purpose of shifting the burden of proof is void if the patent proprietor must carry out the experiment in order to anticipate for any decision of the Board to shift the burden to him. 

Summary of Facts and Submissions

I. The respondent (patent proprietor) in case T 2044/09 has filed a petition for review under Article 112a EPC against the decision of the Technical Board of Appeal 3.3.02 dated 11 February 2014 setting aside the contested opposition division's decision and revoking European patent [..] for lack of inventive step (Article 56 EPC). [...]