Successful petitions under Article 112a(2)(c) EPC

In the inter partes proceedings under review in R 16/13 the petitioner had filed a document with comparative test results. In its written decision, the board of appeal stated that this document did not prove the advantages of the claimed substance because some of the parameters referred to in the claim had not been specified in the document. This issue had not been raised in the proceedings and according to the Enlarged Board it had not been possible for the petitioner to infer the board's reasoning, on the basis of his own expertise, from the way the proceedings developed. The Enlarged Board allowed the petition, stating that the right to be heard is violated when a board gives, ex officio, reasons in its decision without having given the party adversely affected an opportunity to comment on these reasons, and, as far as the patentee is concerned, an opportunity to submit new requests. In T 1378/11 the board stated that R 16/13 could not be understood to give the parties the right to find out from the deciding body how it assesses the facts and arguments on which its decision is likely to be based. In R 8/13 the petitioner relied on R 16/13 and argued that the board's claim construction had come as a surprise. The Enlarged Board highlighted the differences between the cases and rejected the petition for review.

In the ex parte proceedings under review in R 15/11 the board had held that the request did not comply with the requirements of Art. 84 EPC. According to the Enlarged Board, there was no explicit or implicit indication in the file of the appeal procedure from which it could be derived that a possible lack of clarity was at any time discussed with the petitioner or that at least an objection was raised in this respect. The Enlarged Board allowed the petition and held that a minimum prerequisite for an opportunity to comment on a specific ground (here: Art. 84 EPC) was that the petitioner was aware or could have been aware that compliance with that ground was at issue. A statement in the communication concerning a potential discussion of, inter alia, Art. 84 EPC did not amount to a specific objection regarding the request at issue.

In the inter partes proceedings under review in R 3/10 the chairman had stated after the parties' submissions on novelty "that the Board will decide on patentability". The board had then closed the debate and held that the main request was novel but lacked an inventive step. According to the Enlarged Board, the term "patentability" covered a variety of potential objections and the chairman could not have meant to address all of them. Thus, the petitioner had no reason to assume that the board's decision would address more than what had been previously discussed, i.e. novelty. As the petitioner had not been given the opportunity to comment on inventive step, the Enlarged Board allowed the petition.

In R 7/09 the petition was allowed, as the EPO was not able to establish delivery of the opponent's statement of grounds of appeal to the patentee and subsequent petitioner. The petitioner had therefore been unaware of the grounds on which the decision of the board of appeal revoking his patent was based. The fact that the statement of grounds became available to the public and, thus, also to the petitioner by way of electronic file inspection had no bearing on the right of parties to be individually and specifically informed by the Office.

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