4.4.3 Successful petition under Rule 104(b) EPC

In R 21/11, the petitioner (patentee) claimed that the board had decided on the appeal without deciding on a request for admission of a second expert testimony filed by fax. The Enlarged Board found that R. 104(b) EPC was a specific manifestation of the right to be heard which applied regardless of whether the party's submission might have persuaded the board. The argument that the undecided request was irrelevant because its admission would not have made a difference could only be accepted if it could be shown that all aspects "lost" as a result of its non-admission had been taken into account in the decision under review. According to the Enlarged Board, the procedural defect asserted by the petitioner constituted an infringement of its right to be heard, both under Art. 112a(2)(d) EPC in conjunction with R. 104 EPC and under Art. 112a(2)(c) EPC in conjunction with Art. 113(1) EPC. While the petitioner had argued that this infringement consisted in the board's failure to take account of the second testimony in its decision, the Enlarged Board saw the infringement in the board's failure to consider the request for its admission. Had that request been granted, it could have influenced the outcome. There was therefore a causal link between the denied opportunity to comment and the board's decision (see in this chapter V.B.4.3.2). The contested decision was set aside.

In R 3/22, the applicant had requested correction of a withdrawal of the appeal under R. 139 EPC. The Registrar informed the appellant in a communication that, following the appellant's withdrawal of the appeal, the appeal proceedings before the board had been terminated and the board was no longer competent to deal with the case. The Enlarged Board interpreted the Registrar's communication as a decision in which the board implicitly decided on the appeal, while not deciding on the request for correction (see in this chapter V.B.3.4.2 and chapter III.K.3.1.). The request for correction, i.e. the retraction of the withdrawal of the appeal filed after its withdrawal, was a relevant request within the meaning of R. 104(b) EPC for the purposes of Art. 112a(2)(d) EPC. According to the case law of the boards of appeal on R. 139 EPC (see chapter V.A.7.3.7), the success of such a request cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible. For this reason, the Enlarged Board held that the board's refusal to decide on the request for correction under R. 139 EPC in the case at issue was a fundamental procedural defect within the meaning of Art. 112a(2)(d) EPC, and that the petition was allowable.