EPO allows eighth petition for review
9 April 2018
Earlier this year, the European Patent Office (EPO) published a decision allowing a petition for review (see R4/17), bringing the grand total of allowed petitions to eight, out of a total of 151 filed. As is evident from this small total, the petitioner rarely triumphs.
In brief, a petition for review is a formal request to the Enlarged Board of Appeal to review a decision by the Board of Appeal, and it is only permitted under certain circumstances. The grounds for which a petition for review may be requested are found in Article 112a EPC and can be summarised as:
- a problem concerning the composition of the Board (e.g. a member of the Board involved in the decision was not impartial or the Board of Appeal included someone who was not properly appointed as a member);
- a procedural violation or procedural defect took place; or
- a criminal act occurred, which may have had an effect on the decision.
If a petition for review relates to a procedural violation or defect, it is only considered allowable in situations where either an objection was raised by the petitioner during appeal proceedings and dismissed by the Board of Appeal without due consideration, or where an objection could not be raised by the petitioner during appeal proceedings (Rule 106 EPC). The burden of proof lies with the petitioner, and the standard of proof is extremely high.
The case in question concerns the granted patent EP1490411 of Rhodia Chimie, and the ground for the petition was an alleged procedural violation of the fundamental right to be heard.
BASF SE opposed the patent on the grounds of novelty, which was rejected by the Opposition Decision. BASF SE later appealed the decision, citing a new document which they believed to be novelty destroying.
In line with standard Appeal procedures, the EPO sent the proprietor (Rhodia Chimie) the Notice of Appeal, the Grounds of Appeal, and an invitation to respond within the given time frame, which is 4 months from the date of the official notification. However, each official letter was sent without a delivery receipt, and no reply to any letter was filed by Rhodia Chimie. In view of the lack of response from Rhodia Chimie, the Board of Appeal took the executive decision to revoke the patent, and a letter outlining this decision was sent to the proprietor with a delivery receipt.
Rhodia Chimie filed the petition, stating that they had no record of receiving any of the official letters issued by the Board of Appeal, and provided evidence to support their argument.
BASF SE argued that it was implausible that none of the official letters were received. However, the Enlarged Board of Appeal dismissed this and allowed the petition on the grounds that the petitioner could not be expected to “prove a negative”. Specifically, they relied upon Rule 126(2) EPC, which states:
“It shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.”
As the three official letters regarding the appeal procedure were sent without advice of delivery, it was not possible for the Board of Appeal to establish that the letters reached the intended recipient.
Therefore, the Enlarged Board of Appeal set aside the decision to revoke the patent and re-opened proceedings before the Board of Appeal.
This case shows that, although the bar is set very high, if there has been a clear violation of procedure, a petition for review can be successful, providing a useful means to protect the users of the European Patent Office system.
Life Sciences & Chemistry group
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© Withers & Rogers LLP, April 2018