In T 448/16, the Boards of Appeal of the European Patent Office dismissed the Patentee’s appeal against the Opposition Division’s decision revoking EP1169038 , which is directed to the anti-cancer drug dasatinib (Sprycel®). As reported in our previous article on the decision, the Board of Appeal’s decision was based on its conclusion that the asserted technical effect (activity as a protein tyrosine kinase, or PTK, inhibitor) was not made at least plausible in the application as filed.
The Patentee has now filed a petition for review of the decision by the Enlarged Board of Appeal, on the ground that it considers that its right to be heard was violated. The Patentee’s petition focuses on two ‘complaints’, namely:
- That the Board did not adequately consider the Patentee’s submissions, including expert evidence, on what the skilled person would have understood the disclosure of the application to be; and
- That the Board did not adequately consider the Patentee’s submissions on the formulation of the technical problem to be solved.
On what grounds can a petition for review by the Enlarged Board of Appeal be filed? The grounds for review are limited to largely procedural grounds and are set out in Article 112(a) EPC. They are:
- A member of the Board of Appeal took part in the decision in breach of Article 24 EPC, paragraph 1 or despite being excluded pursuant to a decision under Article 24 EPC, paragraph 4;
- The Board of Appeal included a person not appointed as a member of Boards of Appeal;
- A fundamental violation of the right to be heard occurred, or the Board of Appeal did not decide upon the text of the application or patent submitted to it, or agreed, by the Applicant or Patentee;
- The Board of Appeal failed to hold oral proceedings despite being requested to by the petitioner, or decided the appeal without deciding on the request relevant to that decision;
- The decision may have been impacted by a criminal act, and the relevant court or authority has established that the criminal act occurred.
A petition for review by the Enlarged Board of Appeal can only succeed on any of the grounds set out in a) to d) if the objection was raised during the appeal proceedings and dismissed by the Board of Appeal, except where the objection could not have been raised during the appeal proceedings (Rule 106 EPC). If no such objection was raised during the earlier proceedings, the petitioner must explain why the objection could not have been raised. In the dasatinib case, the Patentee argues that the violation of its right to be heard only became apparent when the written decision was issued.
According to Case Law of the Boards of Appeal, IV-F, 3.13.1, all of the petitions for review that have been successful have concerned ground c).
Effect of a petition for review
Unlike an appeal of a decision of the Examining or Opposition Divisions, the filing of a petition for review by the Enlarged Board of Appeal does not have a suspensive effect on the decision. This means that the decision remains effective unless and until the Enlarged Board of Appeal allows the petition. Where the Enlarged Board of Appeal allows a petition for review, the decision in question is set aside and appeal proceedings are re-opened. A decision on the allowability of the Patentee’s petition for review in the dasatinib case is awaited.
The grounds for a petition for review are provided by Article 112(a) EPC, referring to Article 24 (Exclusion and objection) and Article 113 EPC (Right to be heard and basis of decisions), and are supplemented by Rule 104 EPC (Further fundamental procedural defects) and Rule 105 EPC (Criminal acts).
Article 24 EPC, paragraph 1 provides that members of the Boards of Appeal or of the Enlarged 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 EPC, paragraph 4, provides the Boards of Appeal and the Enlarged Board of Appeal with the power to replace member by his alternate for the reasons mentioned in Article 24 EPC, paragraph 1 or for any other reason, including suspected impartiality.