In a recent decision, the EPO Enlarged Board of Appeal (EBA) has allowed the reopening of an appeal proceeding, thereby setting aside a revocation decision taken by the Board of Appeal (BA).

The possibility of reopening appeal proceedings at the EPO is offered by the so-called “petition for review”, introduced into the EPC in 2007. So far, only very few petitions for review have been granted. This is because the requirements are very strict: it must be shown that the BA incurred a procedural mistake, that the BA decision could have been different if this procedural mistake had been avoided, and, if possible, that the party “suffering” the procedural mistake had already objected to it during the appeal proceedings. The strictness of the requirements cause appeal proceedings to be reopened only exceptionally.

The recent decision is interesting as it addresses a set of relatively common circumstances. Here, the patentee had filed an expert declaration late in the proceeding (according to the BA rules of procedure, all evidence supporting an appeal should be filed with the first brief). The patentee had therefore formally requested admission of the declaration to the proceeding. The BA had not taken a decision on the admissibility of the declaration prior to the hearing nor during the hearing, so that the patentee had addressed the declaration assuming that it was admitted to the proceeding. Only when the written decision was issued did the patentee realize that the BA had not taken the declaration into consideration at all, probably because the declaration had not reached the BA members prior to the hearing. On the other hand, since a previous declaration by the same expert had been filed in the same proceeding, the patentee’s references to the expert’s second declaration were likely understood as references to his first declaration, so that the hearing’s discussion was based on a misunderstanding which was, however, not evident to either party at the time.

The EBA held that the appeal proceeding should be reopened as the failure to decide on the admissibility of the second declaration represented a procedural mistake which, if avoided, could have led to a different result. In fact, the declaration addressed precisely the evidence underlying the revocation decision. Thus, this case is important as it clarifies that, in order to achieve the reopening of an appeal proceeding, it is not necessary to show that the outcome would surely have been different; only that it could have.

The EBA further held that the patentee could not have raised raised a formal objection against the BA’s procedural mistake during the appeal proceeding, due to the misunderstanding surrounding the expert declaration referred to in the hearing’s discussion. In fact, this misunderstanding became apparent only upon receipt of the decision. Thus, the case is also important as it identifies a situation in which the – otherwise inescapable – requirement of formally objecting to the procedural mistake prior to the conclusion of the appeal proceeding need not be met, without thereby prejudicing the admissibility of the request to reopen the appeal proceedings.

The recent EBA case therefore sets parameters for the admissibility and allowability of a petition for review which should be carefully taken into consideration when any party involved in appeal proceedings before the EPO considers that a procedural mistake may have been made by the BA, even in good faith. In fact, the case teaches that it is of the utmost importance to voice objections against such procedural mistakes explicitly whenever this is possible; at the same time, even when this is not possible a reopening of the appeal proceeding may still be allowed.

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