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First successful petition for review of EPO Appeal decision

When the current version of the European Patent Convention (EPC 2000) came into force recently, a new procedure was introduced by which, in very limited circumstances, a decision of a Board of Appeal of the European Patent Office could be subject to review. Such a “Petition for Review” is decided by the EPO’s Enlarged Board of Appeal.

This new measure was greeted with some scepticism by practitioners, due to its very limited scope.

However, the first successful petition (R0007/09) has recently been announced.
The patentee filed a petition against the Board’s decision to revoke its patent in an appeal from opposition proceedings where the opponent had filed an appeal and the patentee had failed to reply within the four month deadline set by the Board. The patentee claimed that it had never received the communication transmitting the opponent’s grounds of appeal and setting the reply deadline it failed to meet, and on this basis it had not been given the right to be heard, contrary to Article 113 EPC.

The EPO’s mailroom could not provide any despatch record, and therefore it was concluded that the grounds were not communicated to the patentee, leading to a fundamental violation of Article 113 EPC, notwithstanding that the grounds and communication were readily available on the electronic file.

As a result the case was referred back to the Board of Appeal for reconsideration.

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