4.4. Artikel 112a (2) d) EPÜ – sonstiger schwerwiegender Verfahrensmangel

The petition in R 3/24 was based on the grounds that there was: (a) a fundamental procedural defect in the board's decision in accordance with Art. 112a(2)(d) EPC and R. 104(b) EPC (first defect), (b) a fundamental procedural defect in accordance with Art. 112a(2)(d) EPC and Art. 12(2) and 12(4) RPBA 2007 (second defect) and (c) a fundamental procedural defect in accordance with Art. 112a(2)(d) EPC and Art. 19(1) RPBA 2020 (third defect). Furthermore, a violation of Art. 113(1) EPC was asserted in conjunction with all three alleged defects.

As to the first defect, the petitioner argued that the board had (i) not decided on the request that the decision by the Opposition Division (OD) should be set aside since the patent as granted is inventive over D5 (D5*) in view of D9 and (ii) not explained why D10 was a better starting point than D5 (or D6, D7 or D8)..

The Enlarged Board of Appeal (EBA) held that the request referred to by the petitioner was not a request within the meaning of R. 104(b) EPC. It recalled that, according to the common practice in proceedings before the EPO, requests are in general directed to executable legal consequences sought by the parties. The arguments provided by the parties in support of these legal consequences do not normally belong to the legally binding requests (see also R 17/11). The EBA also referred to R 3/14 in which it had explained that only requests submitted in writing or requests which had been recorded in the minutes of the oral proceedings fell under R. 104(b) EPC. It further specified that the request, insofar as it had required examining inventive step from D5 (D5*) had not been "directed to executable legal consequences sought". The executable legal consequence had been solely the setting aside of the decision under appeal irrespective of the arguments on which the appellant had relied to this end. As to the petitioner’s view that the OD’s decision to start from D5 had been correct and that it had not been for the board to examine D10, the EBA found that these were arguments in support of the legal consequence that the decision should be overturned. One could not consider from the body of the appellant’s submissions before the board that to uphold the appeal on the basis of D5 constituted a request within the meaning of R. 104(b) EPC.

As to the second defect, the petitioner asserted that (i) not providing a decision starting from D5 as the closest prior art had been in contradiction with the standard embodied in Art. 12(2) RPBA 2020, and (ii) the board’s starting from D10 as the closest prior art amounted to a "new line of attack". The EBA held that any violation of Art. 12(2) and (4) RPBA 2007 was not covered by the provisions of Art. 112a(2)(d) EPC. The grounds for a petition for review were exhaustively defined in Art. 112a(2) EPC in conjunction with R. 104 EPC. Article 112a(2)(d) EPC was not a catch-all clause for procedural defects (R 12/23). It merely empowered the legislature to define defects in the Implementing Regulations in addition to the defects mentioned in Art. 112a EPC. Rule 104 EPC exhaustively defined exactly two defects, and a violation of any of the provisions of the RPBA was not among them.

With regard to the third defect, the petitioner referred to "the room incident" which had occurred when one of the respondent's representatives had entered the room where the board had been deliberating and had closed the door. The petitioner argued, inter alia, that the board had failed to decide on Art. 19(1) RPBA as a precondition for assessing compliance with the right to be heard. The petitioner also claimed that, once a party’s representative had entered the deliberation room during deliberations, secrecy had been broken and that this constituted a fundamental procedural defect under Art. 112a(2)(d) EPC. According to the EBA, the petition was obviously unfounded insofar as the defect was based on a violation of Art. 112a(2)(d) EPC in conjunction with Art. 19(1) RPBA 2020. It recalled that Art. 112a(2)(d) EPC was not a catch-all clause for procedural defects and that the only two defects it referred to were those mentioned in R. 104(a) and (b) EPC. The EBA further noted that any misconduct by a board member in respect of their duty to maintain strict secrecy concerning the boards' deliberations may make them liable to disciplinary action by the Administrative Council, as the appointing authority for board members. In summary, the EBA held that the alleged defect that the board had failed to decide on Art. 19(1) RPBA pronouncing a remedy or sanction served no purpose, because the board was not the appropriate body to take such a decision..

The EBA concluded that none of the asserted procedural defects had occurred. It also found that there had been no violation of the appellant's right to be heard. The petition was therefore dismissed as clearly unallowable.

The petition in R 16/23 concerned decision J 6/22 with which the Legal Board of Appeal (the "Legal Board") rejected the petitioner's request for re-establishment of rights and rejected the appeal as inadmissible. The petitioner argued that the Legal Board had failed, contrary to Art. 116 EPC, to arrange for the holding of oral proceedings requested by the petitioner, which represented a fundamental procedural defect within the meaning of Art. 112a(2)(d) EPC and R. 104(a) EPC. Furthermore, the decision was based on grounds or evidence on which the petitioner had not had any opportunity to comment, representing a fundamental violation of Art. 113(1) EPC within the meaning of Art. 112a(2)(c) EPC. The petitioner submitted, inter alia, that the conclusions in the decision under review that procedural economy had been a justification for denying the petitioner's right to an oral hearing were contrary to the established case law of the Boards of Appeal.

The Enlarged Board of Appeal (the "EBA") as composed under R. 109(2)(b) EPC held that, according to the wording of Art. 116 EPC, the aspect of expediency referred only to the first alternative, where oral proceedings take place at the EPO's own initiative. Thus, the department concerned with a request for oral proceedings made by a party to the proceedings had no discretion over whether oral proceedings take place.

The EBA also recalled that the right to request oral proceedings included the right for the party requesting them merely to present orally what it had already submitted in writing (see R 3/10). It held that Art. 116(1) EPC, taking into account the purpose of this provision, was thus intended to ensure that a party was entitled, upon request, to make oral submissions prior to a decision which adversely affected that party.

The EBA agreed with the decision under review in that the case law of the Boards of Appeal had established that, in specific situations which may be considered as covered by the wording of Art. 116(1) EPC, a decision taken without prior oral proceedings despite a request for oral proceeding having been made could be considered as not being in conflict with that provision. It found, however, that the situation underlying the decision under review did not fall under any of the categories established in the case law.

Furthermore, the EBA saw no indication that a dynamic interpretation could lead to the conclusion that Art. 116(1) EPC left room for weighing up, on the one hand, the petitioner's right to present the case orally before the adverse decision had been taken and, on the other hand, aspects relating to the expeditious conduct of the appeal proceedings, legal certainty or the prospects of success of the petitioner's appeal, or to a conclusion that the Legal Board had not been obliged to arrange for the holding of oral proceedings requested by the petitioner. The EBA was not persuaded that the considerations relied upon in the decision under review could lead to the result that the requested oral proceedings had not been mandatory under Art. 116(1) EPC, nor that the petitioner's right to oral proceedings could be balanced against considerations relating to the requirement of timely legal certainty or procedural economy.

The EBA concluded that the Legal Board's failure to arrange for the holding of the oral proceedings had been contrary to Art. 116 EPC and, in view of this, a fundamental procedural defect under Art. 112a(2)(d) EPC had occurred.

According to the EBA, in the case underlying the petition for review, the issues in relation to which oral proceedings had been requested and the final decision had been linked. Hence, the procedural defect of not arranging for the holding of oral proceedings, contrary to Art. 116 EPC, had been a fundamental one within the meaning of Art. 112a(2)(d) EPC in conjunction with R. 104(a) EPC. To arrive at this conclusion, the EBA, in particular, did not have to additionally assess whether the outcome of the decision under review could or would have been different if the procedural defect of not arranging for the holding of oral proceedings had not occurred. According to the EBA, this approach was in line with the case law of the Boards of Appeal, including the EBA (R 3/10).

As a fundamental procedural defect under Art. 112a(2)(d) EPC in conjunction with R. 104(a) EPC had been established, the petition for review was considered allowable. According to the EBA the further ground for the petition (fundamental violation of Art. 113(1) EPC) did not need to be addressed. The decision under review was set aside and the proceedings before the board re-opened.