CASELAW-EPO - reviews of EPO Boards of Appeal decisions

R 11/21 – An objection under R 106 has to be filed at the right time and in the right circumstances – During a review procedure, no assessment as to the merits

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Brief outline of the case

The OD rejected the opposition.

The opponent appealed.

By decision T 760/17, the board decided not to admit a series of late-filed AR under Art 13(2) RPBA20. It also decided to revoke the patent for lack of IS of claim 1 as granted and of all AR I-IX which were timely filed.

The proprietor filed a petition for review under Art 112a.

The objections raised by the proprietor/petitioner

Non-admissibility of requests

The proprietor filed on 13.01.2021, roughly two months before the OP, a series of AR “A”, “B” and “C” which were not admitted by the board.

The proprietor objected first to the non-admissibility of said requests and to the reasoning in the written decision concerning the non-admittance of the AR.

In the letter with which the series of AR  “A”, “B” and “C” were filed, the proprietor had announced, “for merely precautionary reason“, that it would challenge “any contrary decision” by filing a petition for review according to Art 112a should the series of AR not be admitted. From the minutes of the OP before the board and from the decision, it is manifest that no objection under R 106 was actually raised by the proprietor during the OP. 

In its arguments, the proprietor emphasised that it was clear from the wording “precautionary reason” that the objection had been formulated conditionally, drawing a parallel with the permissible filing of AR or conditional procedural requests, objections or submissions in general.

The proprietor has set out in great detail why the AR filed with that letter should be admitted, relying on various aspects such as prima facie allowability, procedural economy, fairness, the need to be given an opportunity to react to the board’s preliminary assessment set out in the communication pursuant to Art 15(1) RPBA20 and the low additional complexity.

Reasoning as to the lack of IS

The proprietor objected further to the reasoning in the written decision concerning the lack of IS for AR I-IX.

The proprietor submitted that the assessment of inventive step was fundamentally deficient for being unreasoned, illogical, contradictory, incorrect or arbitrary.

The proprietor further submitted that its right to be heard had been violated as it had not been given the opportunity to address issues which had appeared in the written reasoned decision for the first time.

The EBA’s position

Non-admissibility of requests

The EBA held that the statement of the proprietor in his letter accompanying the late-filed requests in which it announced that “for merely precautionary reason“, it would challenge “any contrary decision” not to admit the series of AR by filing a petition for review according to Art 112a could not be considered as having fulfilled the requirements of R 106.

The EBA noted that under R 106, the objection has to be raised in respect of “the procedural defect” and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence.

For the EBA, it does not change the fact that the proprietor is relying on statements which were submitted at too early a stage. The proprietor’s reference to the filing of AR or conditional submissions does also not assist its case; making such a request conditional might prevent it from being considered as submitted too late, but does not remedy a premature submission – at least in the context of R 106.

Moreover, the proprietor has not submitted – nor was it apparent to the Enlarged Board – that an objection could not have been raised during the appeal proceedings, for instance at the OP before the Board.

As the requirements under R 106 have not been met in relation to the asserted procedural defect concerning the non-admittance of the series of AR  “A”, “B” and “C”, the petition is therefore clearly inadmissible.

Reasoning for the non-admissibility

While R 102(g) requires that a board’s decisions has to contain reasons, a violation of this obligation is not a ground for petition for review since the list of grounds for review in Art 112a(2) and R 104 is exhaustive and does not include R 102(g).  

Under Art 113(1), decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This implies not only that a party is given the opportunity to present its views, but also that its relevant submissions are taken into account and considered.

The EBA held that assessing the completeness of the reasoning would usually be beyond the scope of scrutiny under Art 113(1). For compliance with the right to be heard, reasons may be incomplete, but as long as they show that the board, in the course of the appeal proceedings, substantively assessed a certain point as being part of the procedure and that it found to be relevant, there will be no violation of Art 113(1). The EBA referred to R 7/16, reasons point 3.1.2 and R 8/15, reasons point 2.2.2.

The EBA cannot find fault with the fact that all the considerations put forward by the proprietor when filing the AR were not explicitly addressed in the decision under review.

In the board’s communication under Art 15(1) RPBA20, there was no reason why the proprietor should have assumed that Art 13(2) RPBA20 would not be considered for the question of admittance.

For the EBA, the reasoning provided on the non-admittance of the series of AR does not constitute a violation of Art 113(1), let alone a fundamental one.

Reasoning for the lack of IS of AR I-IX

The EBA, as far as it is competent to review the matter, did not agree with the proprietor on any deficiency in the reasoning in that respect. Therefore, the question of whether any such deficiency would have amounted to a fundamental violation of the right to be heard need not be considered further.

In its decision, the board explained why it did not agree with the proprietor’s arguments.

The EBA could not establish that the board’s reasoning, by which the proprietor’s relevant submissions have been taken into account, was in any way illogical, contradictory or inconsistent as argued by the petitioner.

Any assessment by the EBA of the question of whether the board’s conclusions in relation to the arguments, facts and evidence presented by the proprietor were correct, including the question of which party to the appeal proceedings bore the burden of presenting arguments, facts and evidence, or to what extent any counter-evidence was required, would amount to an assessment of the appeal case on its merits, going beyond the scope of review proceedings.

The EBA may accept that the term “no pointer can be found in the patent” appears for the first time in the written reasoned decision, but whether new or different terms have been used is not decisive for the question of whether a fundamental violation of the proprietor’s right to be heard has occurred.

No deficiencies as regards the board’s reasoning concerning inventive step can be established, so no violation of Art 113(1) has occurred, let alone a fundamental one.

General conclusion

The petition for review was unanimously rejected as partly clearly inadmissible and partly clearly unallowable.


The decision of the EBA does not come as a surprise.

The decision is interesting in that it makes clear that an objection under R 106 has to be made at the right moment and in the right circumstances. It cannot be made as a precautionary measure when filing requests. It is not like an AR for OP in case none of the requests can be granted.

The EBA confirmed that if a request of a party is not admitted, if the reasons have been discussed with the party, a later petition for review has barely a chance to be deemed allowable.

The EBA has also confirmed that when examining a petition for review, anything amounting to an assessment of the appeal case on its merits, is going beyond the scope of review proceedings.

Some statistics on petitions for review

Up to 14.04.2023, 222 petitions for review have been filed.

182 decisions were taken and 22 cases are pending.

Reopening of proceedings before the board of appeal has occurred in 10 cases.

It is only in 2 cases that after reopening of the appeal procedure, the outcome of the new appeal procedure was different, one in examination, one in appeal.

In all other cases the decision was upheld, either revocation or maintenance in amended form, sometimes different. The procedure following R 11/21 is obviously still pending.

15 petitions were deemed admissible but not allowable.

36 petitions were deemed clearly not admissible.

110 petitions were deemed clearly not allowable, of if clearly not non-admissible, clearly not allowable. .

16 petitions were withdrawn

6 petitions were deemed not filed

6 interlocutory decisions were taken.

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