Since the EPO’s Rule of Procedure of the Boards of Appeal (RPBA) were revised in 2020, parties have faced a stricter regime for the amendment of their case in appeal proceedings. Although the rules were initially framed as only codifying the existing practice, anecdotally many feel that the Boards are now stricter and less flexible. For proprietors, the admission of new version of the claims (new “claim requests”) into the proceedings is largely at the discretion of the Board, and it is common for new claim requests filed for the first time during the appeal procedure to be found inadmissible. Arguably, this has the benefit of enhancing efficiency and predictability of the proceedings. However, a refusal to admit a request into the proceedings can leave proprietors feeling that they have not been given a fair chance to defend their patent.
Can a petition for review of the appeal decision by the Enlarged Board offer a remedy, if request is not admitted and the result is that a patent is revoked?
It is sometimes asked if a petition for review could provide a remedy to a perceived unfair refusal by the Board to admit an auxiliary request.
The history of such petitions is not encouraging. In fact, to date there have been no successful petitions based on a Board’s refusal to admit an auxiliary request into the proceedings. However, petitions for review on such grounds continue to be filed, perhaps reflecting the ongoing frustration of proprietors.
Petitions for review are an exceptional remedy at the EPO. They do not allow for any substantive review of the decision, but only allow for appeal proceedings to be re-opened when there has been a fundamental procedural deficit. The most frequently asserted procedural deficit is violation of the right to be heard. However, early decisions on petitions for review made it clear that the right to be heard cannot be violated by the normal exercise of discretion by the Boards. The Enlarged Board has no competence under Art. 112a EPC to examine the merits of the decision or to go into the substance of a case (e.g., R 11/11, R 12/11). Therefore, the Enlarged Board cannot be used as a means of reviewing the particular way in which a Board has exercised its discretion (R 4/13).
However, a valid petition should still be possible if the refusal to admit a request is manifestly arbitrary or “illegal” (R 6/17, Reason 3.5; R 4/22 Reason 2.1). For example, a case for successful petition could be envisaged if the Board excludes requests that have been on file since an early stage of the opposition proceedings, and which should not be subject to the Board’s discretion at all. Such “carry-over” requests have occasionally been excluded by the boards under various criteria. These varying criteria were discussed, for instance, in decision T 0246/22, which cautions that the application of elaborate criteria to requests filed in first instance may blur the situation in which a Board should not have discretion at all with the situation in which discretion applies, i.e., where the requests are presented only during appeal (Reasons 4.14 – 4.16). It therefore seems possible that a petition could succeed in a case where overly strict criteria are applied to dismiss carry-over requests.
A petition may also be valid if the decision is based on reasons on which the party had no opportunity to comment1. However, here the bar has again been set high. It is enough if the party could be expected to understand that a point is at issue and had an adequate opportunity to comment on it (R 2/12) – it is irrelevant that they may not have used the opportunity to full effect. A party can also not expect that the Board will give them advance warning of how it intends to decide.
In this respect, recently filed petition R 14/24 has attracted some attention. In R 14/24, the preliminary opinion of the Board of Appeal indicated that certain dependent claims were considered to add matter. The proprietor responded by filing new auxiliary requests in which these claims were deleted. At the oral proceedings, the Board confirmed their opinion on added matter but decided that the auxiliary requests in which the claims were deleted would not be admitted into the proceedings. As a result, the patent was revoked. From the decision, it became evident that the Board’s refusal to admit the auxiliary requests was based on their view that these did not address questions of sufficiency of disclosure. Importantly, according to the proprietor, there was no discussion of sufficiency at all at the hearing. Thus, the grounds for the petition do not rest merely on an assertion that the Board exercised its discretion incorrectly (which would not be expected to succeed under the existing case law), but that they reached their decision without giving the proprietor an opportunity to comment on the relevant issue.
This petition is still pending and it will be very interesting to see whether it is successful.
Even then, however, the effect will only be to re-open the appeal proceedings, and it will still be necessary for the proprietor to persuade the Board (perhaps with different members) that the request is both admissible and allowable. Moreover, it remains the case that a petition can only succeed in very narrow circumstances. It will very rarely offer a solution to an auxiliary request being found inadmissible by a Board.
So, what else can Proprietors do?
Prevention in this situation is (far) better than cure. First instance proceedings should be handled with the current practices of the Boards of Appeal in mind. All the fall-back positions for a patent should be part of the case at first instance, so that they can also form part of the appeal without question.
In view of current practice, we recommend that auxiliary requests should be filed at the earliest possible stage of opposition. This maximises the chance that they will be seen as “admissibly filed” in first instance and outside the discretion of the Boards of Appeal. At the latest, they should generally be filed by the time limit set by the opposition division under Rule 116 EPC.
The requests should be also substantiated at that time, i.e., the purpose for which they are filed should be clearly indicated, including an explanation of how the objections (e.g., added matter, insufficiency of disclosure, lack of novelty and/or inventive step) are concretely addressed and why these are overcome. Lack of substantiation can lead to a conclusion that a request was not validly filed and lead to it being excluded from the appeal proceedings, even if the request itself has been on file from the outset (T 0246/22). The substantiation should also be explicitly re-stated at the earliest stage of the appeal procedure (in the grounds of appeal or response thereto) – unsuccessful petition R 10/09 and pending petitions R 9/23 and R 19/22 relate to cases where carry-over requests were found inadmissible by the Board due to an alleged lack of, or late, substantiation in the appeal phase.
If it is necessary to file a request for the first time in the appeal, then reasons should be given as to why it could not be filed earlier. Moreover, these reasons should be provided at the same time as providing the request - otherwise, the reasons themselves can be considered late filed and inadmissible. The number and structure of any newly-filed requests should be kept as simple as possible, and an explanation should be given as to why the request does not introduce any new issues. These measures should give the best chance of the request being admitted into the appeal proceedings.
In view of the strict practice of the Boards, it also remains advisable to keep a divisional application pending in important cases, to give a back-up in case desirable amendment cannot be made in opposition or appeal proceedings.
If you have any questions on this or any other aspect of EPO opposition and appeals practice, please do not hesitate to get in touch with us or with your usual Mewburn Ellis contact.
1 Alternatively, a petition may be valid if the reasoning in the decision is so limited that it cannot be understood how the decision has been reached at all. In this case, the possibility that the decision is based on something on which the party has had no opportunity to comment cannot be excluded.
This blog was co-authored by Anja Koller and Rebecca Tollervey.
Anja Koller
Anja is a member of our life sciences patent team specialising in biotechnology and pharmaceuticals. She is experienced in prosecuting patent applications before the EPO and DPMA as well as in offensive and defensive oppositions before the EPO.
Email: anja.koller@mewburn.com
