4.4. Article 112a(2)(d) EPC – any other fundamental procedural defect
4.4.2 Rule 104(b) EPC – failure to decide on a party's request
According to R. 104(b) EPC, a fundamental procedural defect under Art. 112a(2)(d) EPC may have occurred where the board decided on the appeal without deciding on a request relevant to that decision. Like R. 104(a) EPC (see in this chapter V.B.4.4.1), R. 104(b) EPC also reflects an aspect of the right to be heard (R 21/11).
In R 19/10 it was acknowledged by the Enlarged Board that the EPC does not contain an explicit definition of the term "request". However, according to the common practice in the 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, R 6/22). In R 6/22 the Enlarged Board explained that the fact that an argument is decisive for the particular case did not make it a "relevant request" under R. 104(b) EPC. According to the Enlarged Board, the relevant procedural request in the case in hand, which had been directed to the admittance of the auxiliary request, had been duly decided on by the board.
In R 3/14 the Enlarged Board explained that only requests submitted in writing or requests which the party had been recorded in the minutes of the oral proceedings fell under R. 104(b) EPC (see also travaux préparatoires, CA/PL 5/02 Rev. 1 Add. 1, p. 27). In R 19/10 the Enlarged Board further held that it was not a procedural duty of the boards of appeal under R. 104(b) EPC to analyse the submissions of the parties in order to identify potential requests which were not explicitly made (see also R 17/11). In R 14/10 the Enlarged Board confirmed that, if a party's request is unclear, it is the duty of the deciding body to ask for clarification before deliberation (see also R 7/14). However, if the requests as read out by the Chair in conformity with Art. 15(5) RPBA 2007 do not correspond to a party's intention, it is that party's duty to intervene at that point. In R 12/14 the Enlarged Board stated that if a party submits written requests which the board is entitled to regard as the party's final requests under Art. 15(5) RPBA 2007, the board can also safely assume that these requests are complete.
In R 18/22 the petitioner based its petition inter alia on R. 104(b) EPC, claiming that the board had decided on the appeal without deciding on requests relevant to that decision. The petitioner did not identify which of its requests had not been decided upon. Since the Enlarged Board itself was unable to identify any such requests, it concluded that the petition for review was clearly unallowable in this regard. See also R 2/23.
A request "relevant to that decision" within the meaning of R. 104(b) EPC is a request that could possibly have led to a different decision (R 21/11). See also R 3/22 in chapter V.B.4.4.3.
In the proceedings under review in R 17/13 the petitioner requested remittal of the case coupled with reimbursement of the appeal fee on the grounds of a substantial procedural violation, alternatively that the patent be maintained as granted, and finally oral proceedings. The board held oral proceedings and refused the request for maintenance of the patent and for reimbursement of the appeal fee. The Enlarged Board held that the petitioner's request for remittal was only relevant in the event of there having been a substantial procedural violation, which was held not to be the case.
In R 15/09 the Enlarged Board held that a decision to revoke a patent necessarily includes the rejection of all auxiliary requests.
In the appeal proceedings under review in R 13/14 the appellant had requested that the examining division's refusal of its request to hold oral proceedings in Munich instead of in The Hague be set aside. The board had stated, in the reasons for the decision, that it was not empowered to decide on this request. The Enlarged Board held that this statement, even if not expressed in the usual and formal terminology, had to be considered as a decision on the appellant's request.
In R 10/08 (see also R 6/14), the Enlarged Board referred to G 12/91 (OJ 1994, 285) and stated that the last point in time to intervene is not the moment a decision is announced but the moment at which the Chair declares the debate closed for deliberation. The petitioner should then have requested that the debate be re-opened if it intended to file a further request. Whether the petitioner intervened during or after the announcement of the decision is not relevant.
In R 11/08 the Enlarged Board dismissed the petitioner's allegation that the board had not ruled on a request which it had considered too general.
In R 16/14 the Enlarged Board held that since the condition underlying conditional request (iii) in the proceedings under review (namely, that the board of appeal took the position that an examining division had the option to ignore arguments advanced by an applicant) was not met, the petitioner's allegation that conditional request (iii) had become relevant again for the written reasons of the decision under review and should have been decided upon did not hold. As a consequence, the Enlarged Board held that the claim of infringement of R. 104(b) EPC must be dismissed.
- R 0003/24
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.