EP 2 547 903 B1 relates to a method for diagnosing the structural condition of wind generators.
Brief outline of the case
The OD revoked the patent for lack of N of claim 1 as granted over D2=WO 2010/051278 A1, cited on the ISR established by the EPO.
The proprietor appealed. The appeal procedure took place under the RPBA07.
In its communication under Art 15(1) the board provisionally considered claim 1 as being new over D2. During the OP, the board decided that claim 1 lacked N over D2.
The board refused to admit the AR1 for lack of substantiation under Art 12(2) RPBA07 and argued that its allowability was not prima facie given according to Art 13(1) RPBA07.
The board thus confirmed the revocation in T 784/17.
The proprietor filed a petition for review.
In its petition for review, the proprietor gave 8 reasons for procedural deficiencies committed by the board.
The first 5 procedural deficiencies were considered not admissible in the absence of an objection under R 106.
The last three procedural deficiencies were however admissible, and the EBA decided reopening of the appeal procedure.
Reason 6 can be resumed as follows: no possibility for the petitioner to comment on the factual content of the subject matter of claim 1 of the AR at the OP.
Reason 7 incorrect presentation of the facts due to overlooking the indication of the support of the feature added in claim 1 of AR1 and incorrect assessment in the context of Art 12(2) RPBA07 that the facts were not complete.
Reason 8 can be resumed s follows: no possibility for the petitioner of a substantive submission on the N of the subject-matter of claim 1 of the AR.
The EBA’s decision
The last three procedural deficiencies were admissible, as the proprietor could only realise that its right to be heard had not been respected on receipt of the written decision.
This is manifest for the seventh and eighth procedural deficiencies; for the sixth, this follows from the fact that the applicant was only able to recognise from the written decision that the non-admission was also based other aspects, namely the non-disclosure of the support in the original application and the prima facie lack of N of the subject-matter of claim 1.
On the admissibility of new submissions, some case law of the EBA on Art 112a requires that the party must only be sufficiently heard on its admission; according to another part of the case law, moreover, the exercise of discretion in the context of admission is not only subject to arbitrariness, but also to manifest inaccuracy. The EBA referred to R 6/20.
In the present case, the question arose as to whether the petitioner was sufficiently heard and, in addition, whether, irrespective of this, the correct legal basis for the exercise of discretion was applied and the discretion was therefore not manifestly incorrectly applied. The petition for review can only be held not allowable if both questions are answered in the affirmative.
Admissibility of AR1
The non-admissibility of AR1 was based, inter alia, on two cumulative grounds. The requirements of Art 12(2) RPBA07 were not fulfilled and a prima facie lack of N of the subject-matter of claim 1 of AR1 under Art 13(1) RPBA07.
In view of reasons 6 and 8, the EBA considered that the same procedural defect was asserted from two different perspectives.
The EBA understood the petitioner’s submission to mean that, in the context of the discussion of the admissibility of AR1 during the OP, the petitioner was only allowed to present the reason for the allegedly insufficient substantiation and that the board discussion regarding the admissibility of AR 1 was limited to this point.
The petitioner was therefore not allowed to comment at the OP on the aspect on which the board relied in the grounds for its decision, namely whether the “added step of taking off prima facie establishes novelty over D2 and thus the board held the claim to prima facie allowability as an eligibility criterion under Art 13(1) RPBA07″.
It can be assumed that the case law of the boards must be understood to mean that even if a board issues a preliminary opinion in favour of the proprietor, the latter must respond to objections raised by opponents against the content of this communication, since the board may change its opinion in the course of the further proceedings.
In the present case, this would have presupposed that the board should have expressly addressed the issue in the context of the debate on the exercise of discretion regarding the admission of AR1, since in the present case there are no indications for the EBA that the opponents would have addressed the aspect of N in the context of the debate on admissibility.
The EBA held that in order for the board to have been allowed to rely on the aspect of the prima facie lack of N of the subject-matter of AR1 in the decision on the non-admissibility of AR1, the petitioner should have been given the opportunity to make submissions on this at the OP.
In the light of all the above, the fact that the board did not expressly address the issue of prima facie N of the subject-matter of claim 1 of AR1 in the debate on the exercise of discretionary power under Art 13(1) RPBA07 and did not allow it to be presented is a serious violation of the proprietor’s right to be heard under Art 113(1).
If the issue had been raised and the opportunity given to comment on the prima facie N of the subject-matter of claim 1 of AR1, it cannot be ruled out from the outset that the discretionary decision would have been different:
It is conceivable that the board would have assessed the prima facie N differently if it had raised this aspect, allowed it to be presented and taken into account any submissions by the proprietor.
It is possible that the board would then have weighed the significance of the lack of a complete substantive submission within the meaning of Art 12(2) RPBA07 differently, and to a lesser extent, and would have admitted AR1.
In view of the Reasons 6 and 8, the other question does not need a reply.
Comments
Distinguishing between admissibility and allowability is sometime a rather difficult exercise. In the present two aspects seem to have played a role, which in the end confused the issue: the alleged lack of substantiation led to a prima facie lack of allowability.
The present petition is the 11th petition for review which leads to reopening of the appeal procedure. It is however doubtful that even if AR1 is admitted it will change the fate of the patent.
Some statistics on petition for review
A total of 282 petitions have been filed up to 26.04.2025. 52 are still pending.
7 were deemed not filed and 25 withdrawn.
40 were clearly not admissible.
136 were not allowable (in full, partly and not partly admissible)
15 were admissible but not allowable.
In 11 cases, the appeal procedure was reopened, but up to 26.04.2025, only in 2 cases a different decision followed reopening, 1 in examination and 1 in opposition. In 9 cases the original board decision was upheld.
Overall, the rate of success of petitions for review is rather low.
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