Petition for review under the European Patent Convention

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Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". [1] A petition for review can essentially only be based on a fundamental procedural defect. [1] Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. [1] [2] The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. [3] Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds. [4]

Contents

Requirements and effects

A party to appeal proceedings may file a petition for review. To do so, the party must however have been adversely affected by the Board of Appeal's decision. [5] The prescribed contents of the petition for review is laid out in Rule 107 EPC. The petition must be filed with a time limit of 2 months from the notification of the Board of Appeal's decision, except when based on the grounds that a criminal act may have affected the decision of the Board of Appeal. In the later case, the petition must be filed "within two months of the date on which the criminal act has been established", but no later than five years after notification of the Board of Appeal's decision. Furthermore, a fee must be paid. [6]

The review procedure has no suspensive effect on the Board of Appeal decision. [1] [7] [8] If the petition is allowable, the Enlarged Board of Appeal sets aside the decision and re‑opens proceedings before the Boards of Appeal. [9]

Obligation to raise objections (Rule 106 objection)

Under Rule 106 EPC, "a petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings." In other words, unless the reason for an objection comes into light only in the written decision of the Board of Appeal, not raising an objection under Rule 106 EPC as early as possible during the appeal proceedings may be fatal to the admissibility of a petition for review. [10] An objection under Rule 106 must be immediately recognizable by the Board of Appeal and it must be specific, i.e. "the party must indicate unambiguously which particular defect of those listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on". [11] [12]

Grounds for review

There are five sets of grounds for review as laid out in Article 112a(1) EPC. The available grounds are strictly limited to these enumerated grounds. [1] [13]

The ground for review that a violation of Article 113 EPC occurred (violation of the right to be heard) is one of those most expected to be relied upon and, at the same time, it leaves much room for argument. [1]

However, a procedural error marring the appeal proceedings does not, by itself, suffice to guarantee a successful petition. There must be a causal link between the alleged procedural defect and the damaging decision. Otherwise, the defect was not decisive and hence not fundamental. [14] [15]

Procedure

The actual procedure for examination of the petitions for review involves two stages.

First stage: Rejection of clearly inadmissible or unallowable petitions

First, a three-member Enlarged Board decides whether the petition is clearly inadmissible or unallowable. If so, the petition is thrown out immediately. [8] This first stage is "a quick screening process to be conducted by a three-member panel of the Enlarged Board in order to reject petitions which clearly cannot succeed." [16] It is, in other words, a sifting process. [8] To reject a petition as clearly inadmissible or unallowable, the three-member panel has to reach the decision unanimously. [8] [17] The decision is taken based only on what is in the petition, [8] [18] and the other party or parties, if any, are not involved and not invited to oral proceedings during that first stage. [8] Most petitions are rejected during this first stage. [19]

Second stage: Five-member examination

Secondly, if the petition is not rejected during the first stage, a five-member Enlarged Board examines the petition as to its merits. [1] [20] If the petition is allowable, the decision is set aside, the case is re-opened and sent back to the Board which took the reviewed decision, and the fee paid upon filing the petition for review is reimbursed to the successful petitioner. [21] [22] The Enlarged Board of Appeal has also the power to replace members of the Board of Appeal who took the reviewed decision. [8] [23]

Statistics

The first petitions for review included R1/08 (application no 97600009), R2/08 (application no 00936978), R3/08 (application no 01943244) and R4/08 (application no 98116534). [24] [25] [26] The first allowable petition for review was decision R 7/09, for a fundamental violation of Article 113 EPC. [27]

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

European Patent Convention International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.

The Guidelines for Examination in the European Patent Office are general instructions, for the examiners working at the European Patent Office (EPO) as well as for the parties interacting with the EPO, on the practice and procedure at the EPO in the various aspects of the prosecution of European patent applications and European patents. The Guidelines have been adopted, effective as at 1 June 1978, by the President of the EPO in accordance with Article 10(2)(a) EPC.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the parent application, unless specific provisions in the European Patent Convention (EPC) require something different.

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

Art. 23 1/15, Art. 23 2/15 and Art. 23 1/16 are three related cases decided by the Enlarged Board of Appeal of the European Patent Office concerning the removal from office of Patrick Corcoran, a member of the Boards of Appeal, who had been previously suspended by the Administrative Council of the European Patent Organisation. According to Article 23(1) EPC, members of the Boards of Appeal may only be removed from office by the Administrative Council on a proposal from the Enlarged Board of Appeal. Two cases were successively initiated by the Administrative Council, but the Enlarged Board eventually dismissed both of them. In the third case initiated by the Administrative Council, the Enlarged Board decided not to propose the removal from office of Corcoran.

G 2/19 was a referral under Article 112(1)(a) EPC before the Enlarged Board of Appeal of the European Patent Office (EPO) dealing with three legal questions, the third relating to whether oral proceedings before the EPO Boards of Appeal may be held in Haar in the Munich district rather than in Munich per se, when a party objects to the oral proceedings being held in Haar. In July 2019, the Enlarged Board of Appeal decided that oral proceedings before the Boards of Appeal may be held in Haar without infringing Article 113(1) EPC and Article 116(1) EPC.

References

  1. 1 2 3 4 5 6 7 Julian Cockbain, Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal, Journal of Intellectual Property Law & Practice (2009) 4 (12): 876-892. doi : 10.1093/jiplp/jpp168.
  2. ↑ EPO web site, Frequently asked questions about the revised European Patent Convention (EPC 2000) Archived 2009-10-14 at the Wayback Machine , item 14. Consulted on October 31, 2007.
  3. ↑ Basic proposal for the revision of the EPC, MR/2/00
  4. ↑ "Enlarged Board of Appeal Decision G1/97" . Retrieved 2020-05-05.
  5. ↑ Article 112a(1) EPC
  6. ↑ Article 112a(4) EPC
  7. ↑ Article 112a(3) EPC
  8. 1 2 3 4 5 6 7 Kevin Garnett, QC (8–9 November 2012). EPO boards of appeal and key decisions, Petitions for review to the Enlarged Board under Article 112a EPC, four years on – an overview of decisions to date (Part 1 of 4). Munich, Germany: European Patent Office. 2:45 to 4:50 minutes in. Retrieved July 8, 2013.
  9. ↑ Article 112a(5) EPC
  10. ↑ Regarding the obligation to raise the objection as early as possible, see R 1/14, point 3: "That an objection is raised in good time is an indispensable prerequisite for the admissibility of a petition under Article 112a EPC. The wording of Rule 106 EPC does not say so explicitly, but it is in keeping with its spirit and purpose, which is that a party should draw the board's attention expressly, and separately from its other submissions, to any fundamental procedural defect to enable it to investigate and, if necessary, rectify the alleged defect while the proceedings are still pending – as envisaged in Rule 106 EPC – and thereby obviate the need for subsequent review proceedings under Article 112a EPC."
  11. ↑ R 4/08, point 2.1, discussed in Cockbain, 2009.
  12. ↑ Kevin Garnett QC (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 4: Deciding on petitions for review of decisions. Munich, Germany: European Patent Office. 0:56 to 1:52 minutes in. Retrieved August 5, 2012.
  13. ↑ Kevin Garnett, QC (8–9 November 2012). EPO boards of appeal and key decisions, Petitions for review to the Enlarged Board under Article 112a EPC, four years on – an overview of decisions to date (Part 1 of 4). Munich, Germany: European Patent Office. 0:20 to 0:28 and 0:59 to 1:48 minutes in. Retrieved July 8, 2013. (referring to R 1/08 and R 2/08)
  14. ↑ Julian Cockbain, Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal: part II, Journal of Intellectual Property Law & Practice (2011) 6 (2): 85-92. doi : 10.1093/jiplp/jpq169.
  15. ↑ Kevin Garnett, QC (8–9 November 2012). EPO boards of appeal and key decisions, Petitions for review to the Enlarged Board under Article 112a EPC, four years on – an overview of decisions to date (Part 4 of 4). Munich, Germany: European Patent Office. 4:17 to 5:07 minutes in. Retrieved November 9, 2013. (referring to R 1/08, and R11/08)
  16. ↑ Enlarged Board of Appeal decision R5/08 of February 5, 2009, Reasons 33.
  17. ↑ Rule 109(2)(a) EPC
  18. ↑ Rule 109(3) EPC and R 5/08
  19. ↑ Kevin Garnett QC (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 4: Deciding on petitions for review of decisions. Munich, Germany: European Patent Office. 2:58 to 3:14 and 6:27 to 6:48 minutes in. Retrieved August 5, 2012.
  20. ↑ Rule 108 EPC
  21. ↑ Kevin Garnett QC (23–24 March 2011). Case law of the EPO boards of appeal: a review by internal and external experts, The Enlarged Board of Appeal: structure and function, its rules of procedure, pending referrals, the procedure for petition for review under Article 112a EPC with an overview of relevant decisions, Part 4: Deciding on petitions for review of decisions. Munich, Germany: European Patent Office. 2:50 to 2:56 minutes in. Retrieved August 5, 2012.
  22. ↑ Rule 110 EPC
  23. ↑ Rule 108(3) EPC and R 5/08
  24. ↑ EPO web site, Petitions for review under Art. 112a EPC Archived 2009-01-27 at the Wayback Machine , consulted on December 3, 2008.
  25. ↑ (in French) Laurent Teyssedre, Premières requêtes en révision, Le blog du droit européen des brevets, July 6, 2008. Consulted on July 6, 2008.
  26. ↑ (in French) Laurent Teyssedre, Premières décisions statuant sur des requêtes en révision, Le blog du droit européen des brevets, September 24, 2008. Consulted on September 30, 2008.
  27. ↑ Decision R 7/09 of the Enlarged Board of Appeal dated 22 July 2009
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