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Petition for review; Snippets from R5/08

For those of you who do not yet know, decisions made on petitions for review under Article 112a EPC are referred to with an "R". Now that we've got that settled here's the more serious part of this post ...

Let's start with a short summary of these review proceedings including some legal basis:

Under Article 112a(1) any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal. The petition may only be filed on the grounds under Article 112a(2) and Rule 104 and needs to be filed within two months of notification of the decision of the Board of Appeal, see Article 112a(4). The petition is deemed not filed if the required fee is not paid in due time (Rfees 2.11a).

Failure to meet the time limit is excluded from further processing according to Article 121(4), however re-establishment of rights may be requested under Article 122 and Rule 136. Of course all due care needs to be proven.

The actual procedure is basically a 2-step procedure, see See Rule 109(2).

During the first step the Enlarged Board consisting of two legally qualified members and one technically qualified member shall examine all petitions for review and shall reject those which are clearly inadmissible or unallowable; such decision shall require unanimity.

During a second step the Enlarged Board of Appeal consisting of four legally qualified members and one technically qualified member shall decide on any petition not so rejected.

If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal, see Article 112a(5). If re-opened the Enlarged Board of Appeal shall order the reimbursement of the fee for a petition for review, Rule 110.

Case R5/08 was one of the cases which was not clearly inadmissible or unallowable.

One of the issues that was dealt with in this case was the meaning of the word "taken" in the transitional provisions, which say that Article 112a shall apply to decisions of the Boards of Appeal taken as from the date of its entry into force.
The petitioner basically wanted to have 2 decisions reviewed, one of them being pronounced during oral proceedings on 18 October 2007 (before entry into force of EPC2000) and notified on 29 April 2008 (after entry into force of EPC2000). The petitioner argued that the word "taken" should be understood to mean "notified" and hence that this first decision could be subject to the petition for review procedure. Although the decision contains some interesting reading material and discusses the earlier decision G12/91 in some detail, this post is limited to reproduction of the summary of the Enlarged Board :

R. 21: In summary, none of the petitioner’s arguments outweigh the very clear direction pointed by decision G 12/91 to the interpretation of “taken” as the date a decision given orally is pronounced. Any other interpretation would lead either to a deceptive meaning of “taken” or the retrospective delay of a board’s decision’s irreversible effect by the later filing of a petition. Accordingly, the Enlarged Board finds that the first decision dated 18 October 2007 was taken on that date for the purposes of the transitional provisions and therefore Article ll2a EPC cannot apply to it. Thus the petition is, as regards that decision, inadmissible.

In reasons 28-34 the Enlarged Board further explains the 2 step character of the petition for review procedure because according to the Enlarged Board, "the respondent wholly misunderstood the two distinct stages ..." (The respondent complained that he was not involved during this first step and that therefore his right to be heard was denied.)

R. 30: [..]in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties [..], but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint [..]of a denial of the right to be heard can arise.

R. 31: [..] Rule 109(3) EPC [..] says quite clearly “The Enlarged Board of Appeal composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under Article ll2a and Rule 109(2) (a) and (3) EPC, are three members of the Enlarged Board. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of Rule 109(3) EPC and the only interpretation it can bear.

So, I hope this post clarified a bit the review procedure for those of you who -like the respondent- "wholly misunderstood" before.

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