Petitioning for "the right to be heard"

Case law has established that the right to be heard according to Article 113(1) EPC is an important procedural right intended to ensure that no party is caught unaware by grounds and evidence in a decision turning down the request on which that party has not had the opportunity to comment (R 3/10). It is well established case law that this requirement includes the party's right to have relevant submissions and arguments considered and fully taken into account in the written decision in a manner that enables the party to understand, on an objective basis, the reasons for the decision (R 19/10, R 23/10, R 8/11, R 17/11, R 15/12, R 13/12 and R 19/12).

Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal (Article 112a(1) EPC). One of the grounds for the petition is that a fundamental violation of the right to be heard under Article 113 EPC occurred.

In R2/14 the proprietor filed a petition against the written decision of the Board of Appeals (T 1627/09) asserting that the decision was not reasoned and that the right to be heard had been violated.

Background to R 2/14

Claim 1 of the Main Request and the Auxiliary Request in T 1627/09 concern a purified protein having desaturase activity in which the claim contained a mistake in the sequence such that the protein does not have the required desaturase activity.

At first instance, the EPO Opposition Division revoked the patent essentially for non-compliance with enablement requirements (Articles 83 and 100(b) EPC). In brief, the reasoning behind this decision was that there was an undue burden on the skilled person to identity which variants (falling under the "at least 60% identity" language in the claims) had desaturase activity.

The proprietor appealed the decision. In the appeal, the proprietor argued that the opponent had not discharged the burden of proof and there was no undue burden of proof on the skilled person. In the written proceedings leading up to the oral proceedings, the opponent commented in detail on this point. The matter was discussed at oral proceedings.

In its written decision, the Board of Appeal acknowledged that the skilled person could have carried out each of the steps for recloning the gene in isolation but asserted that it is the combination of necessary steps which creates an undue burden on the skilled person.

The proprietor then filed a petition in which two complaints against the decision were raised:

1. the Appeal Board had not explained in the written decision why it did not accept the proprietor's arguments; and
2. the Appeal Board's written decision was based on facts and arguments that had not been heard and it had not reasoned its conclusion.

Decision of the Enlarged Board of Appeal

The first complaint

During the appeal process, the proprietor had referred to a specific document to support the assertion that the claims are enabled. This document is not referred to in the Board of Appeal decision. The Enlarged Board of Appeal noted that the teachings in the document did not go beyond what had been disclosed in the patent and the document had merely been used by the proprietor to support factual and legal arguments.

The Enlarged Board of Appeal held that a separate discussion of a document does not necessarily indicate that the Appeal Board had not taken it into account. The Enlarged Board of Appeal held that based on the first complaint by itself, the right to be heard had not been violated.

The second complaint

The Enlarged Board of Appeal noted that the Appeal Board did not mention explicitly or implicitly in the written decision the facts or the sequence of arguments which led it to arrive at the conclusion that the combination of required steps imposed an undue burden on the skilled person.

The Enlarged Board of Appeal held that it has to assume that a violation of the right to be heard under Article 113(1) EPC has occurred if:

• it cannot establish the reasons for the decision are based on facts and considerations on which both parties to the appeal proceedings had an opportunity to comment; or,
• in the event that the parties had been given an opportunity to comment, it cannot establish that the parties' relevant submissions and arguments were considered and fully taken into account when taking the decision.

In R 2/14, the Enlarged Board of Appeal held that the petition was allowable and the decision under review should be set aside and proceedings before the Appeal Board re-opened.

Practical points for parties to an appeal

Petitions for review by the Enlarged Board of Appeal are confined to procedural defects. Substantive matters (eg, novelty, inventive step or enablement) leading to the Board of Appeal decision are not reviewed by the Enlarged Board of Appeal. The Enlarged Board of Appeal needs to set a decision aside before substantive matters will be reviewed by the Board of Appeal.

If you receive a written decision from a Board of Appeal which contains reasons that you did not have the chance to comment on or your submissions were not considered and taken into account, then you could file a petition to the Enlarged Board of Appeal that your right to be heard has been violated. If the petition is successful, the decision will be set aside and the case will be re-opened.