It has been a long day in Munich. You have reached the end of the Oral Proceedings and the European Patent Office (EPO) Board of Appeal announces its decision, which is final . . . or is it? When the updated European Patent Convention (EPC) 2000 came into force in December 2007, it also brought a new provision that allows a party to request decisions of the EPO Board of Appeal to be judicially reviewed by the Enlarged Board of Appeal.
Petition for Review
A “Petition for Review”1 can be filed by any party adversely affected by a decision of the Board of Appeal. The grounds of petition are strictly limited to an incorrect composition of the Board of Appeal, including suspected partiality,2 procedural violations including denying a party’s “right to be heard,”3 and criminal acts. There is no review of the substantive issues from the appeal proceedings.
The petition must be filed within two months of the notification of the decision of the Board of Appeal, or within two months of the date on which the criminal act has been established, and in any event no later than five years from notification of the decision of the Board of Appeal. It must include a reasoned statement and payment of the official fee, currently set at 2910 EUR.4
No suspensive effect is possible as a result of filing a petition, but if successful, the Enlarged Board of Appeal will set aside the adverse decision and reopen proceedings before the Board of Appeal.
As exciting as this may sound, after more than a hundred petitions, only a handful have succeeded in reopening proceedings, and even less in actually overturning the previous decision of the Board of Appeal. Ultimately, even if the Enlarged Board of Appeal rules that the appeal proceedings should be reopened, it is still remitted to the Board of Appeal to render the final decision.
The first successful petition for review resulted from the EPO not being able to establish delivery of theopponent's statement of grounds of appeal to the respondent (petitioner). The petitioner was therefore unaware of the grounds on which the decision revoking the patent was based. The parties were entitled to expect the EPO to comply with the relevant provisions of the EPC regarding the right to be heard, and they had no duty to regularly inspect the electronic file.
The second successful petition again focused on the right to be heard but with respect to the Oral Proceedings. The Board of Appeal in its original decision held that the main request was novel but lacked an inventive step, when only novelty had been discussed orally. Other petitions which have reopened proceedings resulted from the Board of Appeal not taking a decision on whether to admit expert testimony and reports.
In another case, not only were appeal proceedings resumed, but the original decision was subsequently overturned. The petition stemmed yet again from a violation of the party’s right to be heard. The Board of Appeal refused an auxiliary request for lacking clarity, but had not given the applicant an opportunity to discuss this ground.
While statistics show that petitions for review at the EPO have an extremely low likelihood of success, if the Board of Appeal has an incorrect composition or has committed a procedural or even criminal violation, that long day in Munich may not necessarily be the end of your case.