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27 Jul 2021

European Patent Office, Enlarged Board of Appeal, R 5/19 – Violation of the right to be heard, decision of March 15, 2021, reported by Dr. Rudolf Teschemacher, Bardehle Pagenberg

Filing a petition of review under Article 112a EPC is not a very promising exercise, considering that less than 7% of the petitions are successful with the effect that the Enlarged Board of Appeal (EBA) re-opens the proceedings before the Board of Appeal. R 5/19 is one of these cases and it is of general interest because it clarifies the roles of the parties and the Boards as well as the subject of the appeal proceedings.

The opponent’s petition was based on the allegation that an inventive step attack starting from a document which had been dealt with in the decision under appeal and been re-cited in the grounds of appeal had not been considered by the Board. The opponent saw its right to be heard as violated because it had not been given an opportunity in the oral proceedings to argue lack of inventive step starting from that document as closest prior art. Furthermore, the written decision did not deal with that attack.

The EBA holds that the first attack is inadmissible since the petitioner did not raise an objection in respect of the alleged procedural deficiency under Rule 106 EPC. According to the practice of the Boards of Appeal, the declaration of the Chair on the Board’s conclusion on the lack of inventive step was not yet a decision of the Board. Therefore, the petitioner could even after that declaration have requested to re-open the debate on inventive step starting from the document or raised an objection under Rule 106 EPC. In contrast, an objection under Rule 106 EPC was not possible in respect of the insufficient reasoning of the decision under review because this became only apparent from the written decision which expressly states that further lines of argument against inventive step, submitted in written proceedings, had not been based on the generally accepted problem and solution approach and have, therefore, not been considered.

As to the substance of the right to be heard, the EBA observes that an opponent, not addressing in oral proceedings an attack expressly raised in written proceedings, cannot be presumed to have implicitly abandoned this attack. In cases of doubt, it would be a matter for the Board to clarify the situation. The opponent had not been made aware of the position of the Board that only attacks using the problem and solution approach would be considered. This reason was not foreseeable for the opponent. Neither the proprietor nor the Board were prevented from applying the problem and solution approach when assessing inventive step starting from the document.

For the parties to the proceedings, the lesson to be learnt is that they have to preserve their procedural rights as far as possible during the oral proceedings. On the other hand, the Chair of the Board has to ensure a fair, orderly, and efficient conduct of the proceedings in accordance with Art. 15 (4) of the Rules of Procedure, which implies a structure ensuring that the complete submissions of the parties are taken into account as far as they are relevant for the decision to be taken.

A copy of the decision can be read here.