Petition for review under the European Patent Convention
Encyclopedia
Under the European Patent Convention
(EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office
(EPO) to review a decision of a board of appeal
. The procedure was introduced in when the EPC was revised in 2000, to form the so-called "EPC 2000
". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability
. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.
The review procedure has no suspensive effect on the Board of Appeal decision. If the petition is allowable, the Enlarged Board of Appeal sets aside the decision and re‑opens proceedings before the Boards of Appeal.
The ground for review that a violation of occurred (violation of the right to be heard) is one of those most expected to be relied upon and, at the same time, it leaves much room for argument.
According to Cockbain, "an apparent causal connection between the ground for review and the outcome of the decision of which review is sought is only required in the event of a criminal act", although in a later paper, acknowledging the position the EPO Enlarged Board of Appeal has chosen to adopt, he wrote: "There must be a causal link between the violation and the damaging decision".
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) to review a decision of a board of appeal
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
. The procedure was introduced in when the EPC was revised in 2000, to form the so-called "EPC 2000
EPC 2000
The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation...
". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.
Requirements and effects
A party to appeal proceedings may file a petition for review. To do so, the party must however have been adversely affected by the Board of Appeal's decision. The prescribed contents of the petition for review is laid out in . The petition must be filed with a time limit of 2 months from the notification of the Board of Appeal's decision, except when based on the grounds that a criminal act had an impact on the decision of the Board of Appeal. In the later case, the petition must be filed "within two months of the date on which the criminal act has been established", but no later than five years after notification of the Board of Appeal's decision. Furthermore, a fee must be paid.The review procedure has no suspensive effect on the Board of Appeal decision. If the petition is allowable, the Enlarged Board of Appeal sets aside the decision and re‑opens proceedings before the Boards of Appeal.
Obligation to raise objections (Rule 106 objection)
Under , "a petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings." In other words, unless the reason for an objection comes into light only in the written decision of the Board of Appeal, not raising an objection under Rule 106 EPC as early as possible during the appeal proceedings may be fatal to the allowability of a petition for review. An objection under Rule 106 must be immediately recognizable by the Board of Appeal and it must be specific, i.e. "the party must indicate unambiguously which particular defect of those listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on".Grounds for review
There are five sets of grounds for review as laid out in . The available grounds are strictly limited to these grounds.The ground for review that a violation of occurred (violation of the right to be heard) is one of those most expected to be relied upon and, at the same time, it leaves much room for argument.
According to Cockbain, "an apparent causal connection between the ground for review and the outcome of the decision of which review is sought is only required in the event of a criminal act", although in a later paper, acknowledging the position the EPO Enlarged Board of Appeal has chosen to adopt, he wrote: "There must be a causal link between the violation and the damaging decision".
Procedure
The procedure involves two stages. First, a three-member Enlarged Board decides whether the petition is clearly inadmissible or unallowable. Secondly, if the petition is not rejected during the first stage, a five-member Enlarged Board examines the petition as to its merits.Statistics
The first petitions for review included R1/08 (application no 97600009), R2/08 (application no 00936978), R3/08 (application no 01943244) and R4/08 (application no 98116534). The first allowable petition for review was decision R 7/09, for a fundamental violation of Article 113 EPC.External links
- Enlarged Board of Appeal at the EPO, including a section on the "Petitions for review under Art. 112a EPC"