Quis custodiet?
Petitions for review were introduced with EPC 2000 to provide the possibility for a review of cases where appeal proceedings suffered from a fundamental procedural defect or if a criminal act may have had an impact on the decisionParagraph 4, CA/PL17/00.
The intent was that implementation of a petition for review procedure would:-
“…improve the judicial relief available in proceedings before the European Patent Office and emphasise the judicial character of appeal proceedings in the EPO by offering a means to correct intolerable deficiencies. Unwarranted and undue prolongation of the proceedings must be avoided by the establishment of an appropriately designed procedure for this extraordinary remedy. In particular, a quick and simple screening procedure is necessary to sort out at the very beginning clearly inadmissible or ill-founded petitions for review”Paragraph 4, CA/PL17/00.
To achieve the aim of providing a “quick and simple screening procedure” Rule 109(2)(a) EPC provides as a first step that the Enlarged Board of Appeal
“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”
Only if a petition passes this hurdle does it proceed to a second step under Rule 109(2)(b) in which the Enlarged Board of Appeal
“consisting of four legally qualified members and one technically qualified member shall decide on any petition not rejected under sub-paragraph (a).”
Importantly, under Rule 109(3) EPC
“The Enlarged Board of Appeal composed according to paragraph 2(a) shall decide without the involvement of other parties and on the basis of the petition”.
In a recent decision R25/22 the Enlarged Board has questioned this procedure.
In these proceedings the question was raised as to how “clearly unallowable” was to be understood in Rule 109(2)(a) EPC.
The decision states:-
One possible interpretation could be that the term “clearly” is meant to indicate a condition where the unallowability of the petition is already manifest on the basis of a superficial examination of the petition…Reason 38, R25/22
but rejects this arguing:-
However, while this shortened procedure may seem practical where the majority of petitions can be expected to be well founded and where a prima facie examination of the petition already suggests that there is undoubtedly a fundamental procedural defect, it does not seem right to apply such a fast-track procedure unconditionally where a prima facie examination suggests that the petition is unallowable. In the latter case, it could lead to the rejection of well- founded petitions, as the crucial aspects of the petition could remain unidentified during a superficial examination of the petition…Reason 39, R25/22
The EBA then holds that:-
…the correct criterion for determining whether the petition is “clearly” unallowable within the meaning of Rule 109(2) (a) EPC is not just the depth of the analysis required to understand the case from a legal or technical point of view. Instead, what also matters is the degree of conviction of the individual members of the Enlarged Board as to whether the alleged procedural defect is indeed a fundamental procedural defect within the meaning of Article 112a(2) (a) to (d) EPC, once the relevant facts of the case have been identified, possibly only after an exhaustive and detailed examination of all the legally and technically relevant facts. The requirement for the members to reach a unanimous opinion is considered a confirmation of this principle.Reason 40, R25/22
and acknowledges that:-
It may seem that this interpretation of Rule 109(2)(a) EPC is contrary to the clear intention of the legislator; however, the EBA notes that the legislator itself was aware that the procedure might have to be modified in the light of future experience with the practical application of Article 112a EPC; see the explanatory remarks to Article 22(2) EPC, point 5, in the Basic Proposal.Reason 40, R25/22
Several questions are raised by this decision, including:-
- If Rule 109(3) EPC requires that the procedure under Rule 109(2)(a) EPC shall be based on the petition, why is an “exhaustive and detailed examination necessary”?
- If the decision is contrary to the acknowledged intent of the legislator, what gives the Enlarged Board of Appeal the power to ignore this acknowledged intent?
- If a quick and simple screening procedure was required by the legislator, to minimise legal uncertainty, does the 450-day period between filing the petition and issuing the decision in R25/22 meet the legislative intent?
There are very few petitions for review, and very few are successfulAt time of writing over 210 petition for review decisions have been issued since 2008, of which only 9 have been successful. When you consider that there are over 2000 appeal decision every year, the petition rate is low and the successful petition rate extraordinarily low.. The fear that the Boards of Appeal would be swamped were unfounded.
However it is plain that petitions for review should be given high priority because of the legal uncertainty that may ensue.
Is there a clear mismatch between Enlarged Board of Appeal practice, and the legislative intent as exemplified in the rules?
