The European Patent Office (EPO) has granted a petition for review in a new decision from the Enlarged Board of Appeal (R 4/17).

A party to an EPO Board of Appeal decision can file a request for a petition for review by the Enlarged Board of Appeal when:

  • The composition of the board was not correct (e.g. contained a non-impartial member);
  • A fundamental procedural defect of the right to be heard had occurred; or
  • A criminal act may have had an impact on the decision.

It is notably difficult to have petitions for review granted, and this is only the eighth time the EPO has made such a decision.

In the case in question, R 4/17, the disputed decision arose when an opposition against patent EP149041, owned by Rhodia Chimie, was rejected, the patent was maintained as granted and the opponent (BASF) subsequently filed an appeal. During the appeal proceedings the proprietor made no submissions and so the Board of Appeal revoked the patent without holding oral proceedings.

At the commencement of appeal proceedings, in line with usual procedure the EPO sent the patentee letters containing the notice of appeal and then subsequently the statement of grounds, the latter including notification that any response should be filed within a four month deadline. Afterwards the EPO also sent the patentee a further letter forwarding another submission of the opponent.

The patentee filed a petition for review on the grounds that it had no record of ever having received any of the above letters and had no knowledge of the existence of the appeal until it received the board’s decision revoking the patent. The proprietor hence asserted that it was unable to exercise its right to be heard.

The letters in question were sent by registered post but, critically, the EPO did not send the letters with advice of delivery, and so it could not be definitively stated that the letters had been received. Under rule 126(2) EPC, in the event of a dispute as to whether a letter from the EPO reached an addressee, it is incumbent on the EPO to establish that the letter reached its destination. Accordingly, in the circumstances in question, the Enlarged Board of Appeal concluded that “In the absence of any relevant evidence from outside the EPO, the Opponent-Appellant’s notice of appeal, statement setting out the grounds of appeal and its letter must be considered not to have been communicated to the Petitioner.”. Therefore, since the Enlarged Board noted that “Such communication is required by Rule 100(1) in conjunction with Rule 79(1) EPC”, it was concluded that the petitioner/proprietor had no opportunity at all to comment on the grounds for the decision under review and so the proprietor’s petition was allowed.

This case shows that although granted petitions for review are rare, they nevertheless remain a viable tool under appropriate circumstances.