EP 2 547 903 B1 relates to methods for diagnosing the structural condition of wind generators.
Brief outline of the case
In a first decision the board, in a first composition, decided revocation of the patent.
The proprietor filed a petition for review. The petition R 12/21 was successful and the proceedings were reopened as AR1 had not been properly discussed.
In the second decision, in a different composition, the board confirmed the revocation. The board took over the conclusions valid for the MR in the first decision. AR1 was deemed not allowable and the patent was revoked.
The case is interesting in that the board decided first what should be the extent of examination after reopening of the appeal procedure.
The board’s considerations on the extent of re-examination
In T 379/10, the board referred to R 21/11, according to which the parties need not be given a further opportunity to comment on the entire subject matter of the dispute when the appeal proceedings are reopened. Rather, the scope of the proceedings reopened following a successful application for review must be limited to remedying the defect identified in the review decision.
An analysis of the existing case-law of the boards revealed the following picture:
In T 136/09, which were reopened by R 3/10, the board heard the parties at a further OP on IS, but no longer on N. In a second decision, the contested decision was set aside and the patent was revoked.
In decision R 21/11, the EBA, rejected the request for replacement of the members. In the reopened proceedings. T 584/09 (with a revised composition), Reasons 2 the board decided it had to rule anew on all points of fact..
Following R 2/14, in T 1627/09, the board, in its in preparation for the OP, took the view that, in case R 21/11, the EBA had considered re-starting of appeal proceedings from scratch only where it had ordered the replacement of members pursuant to R 108(3). If a change in the composition of the board resulted from other events, such as the retirement or self-recusal of members, then there was no scope for a re-starting of the appeal proceedings from scratch.
In T 379/10, following R 16/13, the board of Appeal (with the same composition) interpreted the statements of the EBA in R 21/11 in deciding that the resumed appeal proceedings must be limited to remedying the defect identified in the review decision.
In R 5/19, the request to replace the members of the board who had taken part in the annulled decision was rejected. The EBA also rejected the proprietor’s request to limit the reopening of proceedings and ordered the reopening pursuant to R 108(3) without restriction. In the reopened proceedings, T 2378/13, the board adopted this interpretation.
The board’s conclusions on the extent of examination
Where the EBA has ordered the replacement of the former members, the entire appeal proceedings must be repeated, cf. R 21/11, T 1627/09, and T 379/10,
Where the reopened proceedings were conducted with a different composition of the board for other reasons, such as retirement or self-recusal, in some cases only the flawed part of the earlier proceedings was repeated, cf. T 379/10 and T 136/09, whilst in other cases the entire proceedings were repeated, see T 584/09.
In R 5/19, the EBA rejected a request to limit the scope of the reopened proceedings. The board in the subsequent reopened proceedings conducted the appeal proceedings with an unchanged composition and without any limitation.
The board’s decision on the extent of examination
Having weighed up the various considerations, the board has concluded that, in order to uphold the proprietor’s right to a fair hearing, the MR and AR1 must be examined. However, the board considered that it may rely on the findings of the previous board, which were not vitiated.
The review procedure under Art 112a enables the appellant to have a decision adversely affecting them reviewed for the procedural errors expressly mentioned in Art 112a(2) and the Implementing Regulations, but not a full review of the decision on its merits.
Comments
Summing up, when the procedure is reopened following a successful petition for review, the petitioner is in principle not allowed a full re-examination of the case. Elements of the original decisions, which were not part of the petition for review will not be discussed again.
When the board decides the reopening has to cover all aspects of the earlier decision, a different decision is not the most likely outcome.
In R 5/24, R 11/23, R 16/23, reopening was ordered, but the cases are still pending. No further decision has yet been taken.
In R 12/21, R 3/22, R 5/19, R 4/17, R 2/14, R 16/13, R 21/11, R 3/10 and R 7/09, the original decision was upheld.
Only in R 3/15 (revocation ended in maintenance) and R 15/11 (refusal ended in grant), the decision after reopening was different.
The clear conclusion is that, from the 229 petitions filed since introduction of Art 112a in the EPC, only very few were successful and even less led to a different decision.
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