Zusammenfassung von EPC2000 R 106 für die Entscheidung R0006/22 vom 06.11.2023

In R 6/22 the petition for review was essentially based on the two grounds that (1) the non-admittance of the auxiliary request had constituted a violation of the right to be heard since the auxiliary request had been submitted in response to a new argument raised by the board, and (2) the board's failure to carry out a full and proper examination of the inventive step of the auxiliary request (when deciding on its clear allowability for the purposes of its admittance) had been tantamount to not taking a decision within the meaning of R. 104(b) EPC. Moreover, this had been, according to the petitioner, another case where the proprietor's right to be heard had not been respected because its inventive step arguments had been ignored. The Enlarged Board of Appeal (EBA) recalled that pursuant to R. 106 EPC, a petition for review based on a ground for petition under any of Art. 112a(2)(a) to (d) EPC is admissible only where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the board of appeal, except where such objection could not be raised during the appeal proceedings. Referring to R 18/12 the EBA recalled that in determining whether the petitioner has complied with R. 106 EPC, what matters is not the formal wording of the objection but its substance as it could be objectively understood by the board. According to the EBA, in the present case, the petitioner could and should have made an explicit objection under R. 106 EPC. With regard to the first ground on which the petition for review was based no such objection was apparent from the file. According to the petitioner, during the discussion on the admittance of the auxiliary request, it had made an unequivocal statement that failure to admit the request would be a violation of its right to be heard. This alone had to have been sufficient for the board to recognise the objection as one under R. 106 EPC. The EBA disagreed with the petitioner. Even if the board might have subjectively perceived that the proprietor's argument during the discussion on admittance was intended as an objection under R. 106 EPC, the board apparently had not considered the objection to have been effectively raised. Under the circumstances as apparent from the file, the board had had no reason to assume that the petitioner's argument on the right to be heard had already been a formal objection pursuant to R. 106 EPC. Such objection normally needed to be formulated after the alleged procedural irregularity and could not be formulated prematurely (R 14/11). For this reason alone, the board had not had to assume in the course of the oral proceedings that the proprietor had intended to make an objection under R. 106 EPC, even if it had taken note of the remark on the right to be heard during the discussion on admittance. The EBA furthermore pointed out that there was no trace of any explicit dismissal of the alleged objection on file and it was not convinced about the petitioner's explanation, according to which the non-admittance of the auxiliary request had to be regarded as the dismissal. In the EBA's view, from the totality of the circumstances as presented by the petitioner, it seemed much more likely that the board had not taken note of the objection and therefore had not reacted. In this way, the absence of any discernible reaction from the board was a further indication that the board could not perceive the right to be heard argument as a recognisable objection under R. 106 EPC. The EBA held that in a situation such as the present case, a diligent party should normally insist on a discernible response from the board. Failure to do so may leave the party with an indication that weighs against its case. The EBA concluded that the petitioner had not made a recognisable objection under R. 106 EPC. The first ground had thus to be rejected as clearly inadmissible. As regards the second ground for petition, the EBA found that though it was admissible, it was clearly unallowable. The EBA reasoned, inter alia, that it had been unable to discern an undecided request within the meaning of R. 104(b) EPC. It reaffirmed the view that ignored facts and arguments did not constitute a "request" within the meaning of this rule and that the fact that an argument is decisive for the particular case did not make it a "relevant request" under R. 104(b) EPC. The EBA held that the relevant procedural request in the present case, which had been directed to the admittance of the auxiliary request, had been duly decided on by the board. The EBA also came to the conclusion that the proprietor had had the opportunity to comment on the issue of inventive step and the prima facie allowability of the auxiliary request.