After 40 years of existence, recently the EPO introduced the possibility to file an appeal (termed a “petition for review”) against a decision of the EPO Boards of Appeal (which is otherwise final and thus often of very significant impact for the losing party). This option is possible in those very exceptional cases where it can be argued that that the appeal decision was affected by a procedural mistake of the Board itself.

A number of petitions have been filed with the EPO since this important legislative change came into force, but they have rarely been successful.

However, in a very recent decision the EPO has in fact reopened appeal proceedings for a certain European application (which had been refused both by the Examining Division and by the Board of Appeal), because it found that the Board of Appeal had failed to respect the Applicant’s right to be heard in that case. This is surely good news for the Applicant, as otherwise the Board of Appeal decision would have been final and the application would now be definitively refused.

The details of the case are as follows: during the hearing concluding the appeal, the applicant had been allowed to first discuss a main claim request and, when this was held not to be allowable, an auxiliary claim request. When discussing the auxiliary request, the applicant had addressed the (possible) objections of whether the auxiliary request was literally supported by the original application and whether it was inventive. The applicant had not addressed clarity, as this aspect did not appear to be “on the table” in the course of the appeal proceedings with respect to this specific claim request. However, the Board decided to reject the auxiliary request (and thus definitively refuse the application altogether) precisely because the auxiliary request did not meet the clarity requirement, but without giving the Applicant the opportunity to address this objection before taking its decision on this point.

Interestingly, the EPO decided to grant the petition and reopen the appeal proceedings on the basis that, in the EPO’s view, “[i]t is for the Board of Appeal to draft its own texts in a way that enables the reader, taking into account all documents on file, to conclude that the right to be heard … was respected with regard to the grounds on which the decision of the Board of Appeal is based.” Thus, in this case the EPO decided to shift the burden of showing that the right to be heard was not violated onto the Board of Appeal itself, and to locate this burden in documents drafted before the petition for review was even filed, rather than letting such burden rest entirely with the petitioner and allowing the Board of Appeal to defend itself thereafter by placing the emphasis on the defensive arguments brought by the Board of Appeal only in response to the petition itself.

Even more interestingly, in this case the EPO decided that it was not necessary for the petitioner to show in a definitive manner that the right to be heard had been violated. In fact, as long as the EPO was unable to establish, having heard the petitioner and the Board of Appeal, whether the petitioner’s right to be heard had been respected, the EPO held that it had to assume that a violation of the petitioner’s rights had in fact taken place, and such assumption was held to be sufficient to reopen the appeal proceedings.

This decision is quite important as it establishes an approach that is very favorable to the petitioner. Of course, cases where an EPO Board of Appeal makes a procedural mistake are extremely infrequent, but this decision allows the applicants to redeem their rights in those highly infrequent cases. This is clearly a very positive development which will help applicants avoid losing any rights when those rights are in fact legitimately owned and fairly prosecuted by their European patent attorneys.

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