EPO – R9/09 – Petition for review rejected as clearly inadmissible because objection to procedural effect was not raised during appeal proceedings as required by Rule 106 EPC

Posted: April 1st, 2010

EPO, Enlarged Board of Appeal, 22 March 2010, Case No R 9/09 

This petition for review concerns decision T71/06 dismissing the appeal of the patent proprietor against the decision of the Opposition Division to revoke its patent. The petition for review was filed on the grounds of Article 112a(2) (c) and (d), i.e. "fundamental violation of the right to be heard" and "any other fundamental procedural defect defined in the Implementing Regulations"
Three procedural violations were addressed by the petitioner. First of all, the Board had refused to postpone the oral proceedings for additional preparation time. Secondly, a late filed document was admitted. And thirdly, extra time to carry out comparative experiments (relating to the late filed document) was refused. 

The petition never made it to the five-member stage, since the Enlarged Board of Appeal dismissed the petition as "clearly inadmissible" on the ground that no objection under Rule 106 EPC was raised during the proceedings before the Technical Board of Appeal. This, according to the Enlarged Board, must be done timely, explicitly and as a separate objection (i.e., before the debate on a substantive ground for opposition is closed), in order to give the Board an opportunity to revise the alleged procedural defect and to safeguard the petitioner's right under article 112a EPC. The only exception is where such an objection could not be made, but this has to be substantiated by the petitioner. An oral argument made by an accompanying person after closure of the debate on inventive step, as was the case here, according to the Enlarged Board does not qualify as an objection pursuant Rule 106 EPC. The EBA continues to apply its strict (or rigid) approach in interpreting Rule 106 EPC as established in R 4/08 and confirmed in R 7/08.
As a last point, the Enlarged Board confirms that the time limit for filing a petition for review expires two month after notification of the decision in writing, which is the becoming available of the written decision (i.e. the grounds for the decision), taking into account the "10 day rule" of notification by post.

Read the decision (in English) here.

One Response

  1. Chris says:

    the EBA states that the ssiepnsuve effect of an appeal is not the reason that a divisional can be filed during the appeal period, I might indeed be a little too quick to conclude that a divisional can validly be filed during a period in which the application is deemed to be withdrawn and further processing can be requested.The EBA relies heavily on Art. 67(4) EPC, which provides that an application shall be deemd never to have had the effects of provisional protection when it has been “withdrawn”, “deemed to be withdrawn” or “finally refused”. The EBA then reasons that an application is “finally refused” only when the appeal period has expired. However, there is clearly no need for the period for requesting further processing to have expired for an application to be “deemed to be withdrawn”.Since r. 3.2.4 stresses that an application is pending if it is in a status in which “substantive rights” deriving from the application under the EPC are (still) in existence, I guess it could be argued that an application is not pending if it is “deemed to be withdrawn”, even though the applicant can simply request further processing and thereby revive those substantive rights retroactively.So for the moment I withdraw my earlier suggestion that a divisional may now also be filed during the period in which further processing can be requested.Does a European patent application give rise to any other “substantive rights” apart from the provisional protection of Art. 67? Given that provisional protection only exists from the date of the publication of the application, one could wonder if any “substantive rights” exist before the publication… If that is not the case, G 1/09 seems to suggest that a divisional application cannot be filed before publication. This is almost certainly not the intention of the EBA, but still.What other substantive right am I missing?Is it sufficient that future publication and therefore future provisional protection is more or less guaranteed once various fees have been paid and various acts have been performed? Even if that is the case, it would be required to pay those fees and performs those acts before a divisional can be filed.Is there anybody else who believes that G 1/09 might imply that a divisional cannot be filed before publication of the (parent) application?

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