IP Cases & Articles

The right to be heard: notification by the EPO

The EPO recently published a decision of the Enlarged Board of Appeal regarding R 4/17; this was the eighth ever decision granting a petition for review. Petitions for review are the mechanism provided by the EPO (as set out in Article 112a EPC) for allowing parties to review the decisions of the Board of Appeal; if the petition is deemed to be allowable, the Enlarged Board of Appeal will examine the decision of the Board of Appeal and may choose to set aside the decision while reopening proceedings before the Board of Appeal.

Petitions for review may be filed by any party adversely affected by any decision of the Board of Appeal, although the strict requirements and the unwillingness to consider any substantive issues means that the number of petitions for review being filed is rather low. Article 112a(2)(c) EPC states that a petition for review may be filed on the grounds that there has been a fundamental violation of the right to be heard under Article 113 EPC, which requires that all the concerned parties have had an opportunity to present their comments.

This particular case related to the granted patent EP 1490411, claiming methods for stabilising emulsions, which was opposed for a lack of novelty. This opposition was rejected in the first instance, after which an appeal was filed that cited new prior art that was considered by the opponent to be novelty-destroying.

In line with the appeal procedure, the EPO sent the patent proprietor three letters; the notice of appeal, the statement of the grounds of appeal, and an invitation to respond within four months of notification.

In accordance with the EPC Guidelines for Examination (E-II 2.3), “Decisions incurring a period for appeal or a petition for review, summonses and other documents as decided on by the President of the EPO must be notified by registered letter with advice of delivery or equivalent”. However, the three letters sent by the EPO in this case were sent without advice of delivery.

The proprietor did not respond within four months of notification, and in due course the Board of Appeal issued its decision to revoke the patent without holding oral proceedings.

Upon receiving the decision (which was sent with advice of delivery), the proprietor filed a petition for review in which they claimed that they had never received the three earlier letters relating to the appeal.

As a result of not having received these letters, the proprietor was of the opinion that they had not had an opportunity to comment on the appeal and thus their right to be heard had been violated.

While it was argued that a situation in which all three letters were not received (and yet earlier and later communications were all received without any issues) was rather implausible, the burden of proof lies with the EPO in showing that the communications were received (in line with Rule 126(2) EPC). It was also determined by the Enlarged Board of Appeal that it was unreasonable to expect the proprietor to prove that they had not received the letters, as proving a negative (non-receipt) is difficult at best.

As the EPO could not prove that the proprietor had received the letters relating to the appeal, it was decided that the letters must be regarded as not having been received. While it was possible for the proprietor to access the documents on the electronic file, representatives and proprietors “have no duty to monitor the proceedings themselves by regularly inspecting the electronic file” (in line with the outcome of R 7/09). The availability of the documents was therefore irrelevant to the question of whether the proprietor was informed of the appeal.

As it could not be proven that the proprietor had been properly notified of the appeal proceedings, it was agreed that the proprietor had not been given the opportunity to present their views and so their right to be heard under Article 113 EPC had been fundamentally violated. The case was therefore referred back to the Board of Appeal to continue the appeal proceedings.

Case details at a glance

Jurisdiction: European Patent Office
Decision Level: Enlarged Board of Appeal
Parties: Rhodia Chimie (patent proprietor) and BASF SE (opponent)
Case: R 0004/17
Date: 29 January 2018
Link to full decision: https://register.epo.org

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