In 2008 the European Patent Convention was amended to allow parties of appeal proceedings to petition the Enlarged Board of Appeal to review decisions. The Enlarged Board is the European Patent Office’s highest appellate body and had previously only taken cases referred by the Boards of Appeal or the President of the EPO. The Enlarged Board’s role is to clarify the Convention and to resolve contradictory decisions from the Boards of Appeal.
There are only limited circumstances under which applicants or opponents can petition the Enlarged Board. These include a violation of the principle that decisions may be based only on grounds or evidence on which parties have had a chance to comment. Additionally, a petition can be filed on the basis that there was a fundamental procedural defect during the appeal.
It is interesting to see how petitions to the Enlarged Board have fared. Since its inception there have been about 85 petitions lodged. About 20 have still to be decided, but the decided cases show that the Enlarged Board are hard to convince. In the vast majority of cases the petition has been dismissed as inadmissible, unallowable or even ‘clearly’ unallowable. In a few cases the petition has been withdrawn. In fact we have only found 2 cases where the original decision has been set aside. In one of those cases it was found that the Board of Appeal had not given the parties a proper chance to discuss inventive step, mainly it seems through a misunderstanding during the hearing. In that case the Board of Appeal was ordered to reopen the proceedings.
With so few cases succeeding, does this mean that petitions are a waste of time? Well, no it does not. Many of the petitions are likely to be speculative and made by parties who have lost important cases; however slim the chances, parties will reason that it is worth making a petition, just in case. Clearly the Enlarged Board is not sympathetic to these petitions and it is not surprising that the vast majority fail. Encouragingly, the Enlarged Board has shown that it is prepared to reverse the Boards of Appeal where appropriate.
Most of us will probably never take a case to the Enlarged Board but in any appeal it is worth bearing in mind that the possibility exists.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.