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

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.

Similarly, in R 4/17 the petitioner argued that it had no record of ever having received the notice of appeal or statement of grounds for appeal and that it had no knowledge of the existence of the appeal until it received the decision in the appeal case. The Office was not able to establish that the critical communications had reached their destination, as required under R. 126(2) EPC. The Enlarged Board held that parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Art. 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file. It cannot be expected that the respondent should prove a negative, i.e. the non-receipt of a letter, or provide a plausible explanation for non-receipt.

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 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 (see also chapter III.B.2.5.1 "Decision could not be expected").

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 16/13 the petitioner had filed a document with comparative test results. In its written decision, the board of appeal raised an issue that had not been raised in the proceedings and 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 or 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 the inter partes proceedings under review in R 2/14 of 22 April 2016, the Enlarged Board noted that the board's decisive line of argument had concerned the aspect of modifying the inactive SEQ ID NO: 4 by means of recloning the desaturase, starting from E. gracilis. The reasons given by the board were limited in so far as, after establishing the need for recloning, it had immediately stated its conclusion that, although the skilled person could in fact perform each of the necessary steps, combining those steps created an undue burden for him. The other two alternative approaches relied upon by the petitioner had not been discussed at all by the board; they had merely been referred to as suffering from the same negative conclusion. The board had mentioned neither facts nor a sequence of arguments that had led it to this conclusion. Therefore, it could not be understood and reproduced by the affected party. The Enlarged Board allowed the petition.

In R 3/15 the Enlarged Board set aside the inter partes decision under review on account of a breach of the right to be heard. The board had reformulated the problem based on a new interpretation of claim 1, presented for the first time in the written reasons for its decision, that none of the parties had previously made a case for, either in the opposition or the appeal proceedings. It was apparent from the parties' submissions that not only the appellant but also the respondents had assumed a different interpretation of claim 1 in the discussion on feature (ii). Thus the appellant had been surprised by the board's new line of argument on inventive step in its written decision, on which it had not had an opportunity to comment. That was a breach of the right to be heard (Art. 113 EPC).

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