#EPO: Petitions for review rarely succeed before the Enlarged Board of Appeal, so if one does, it is time to do a quick summary, below:

𝐅𝐚𝐜𝐭𝐬:

• The opponent appealed, and with its reply, the patentee filed Auxiliary Request 2.

• In its preliminary opinion, the Board considered that the amendment had not been sufficiently substantiated and indicated that it was inclined not to admit Auxiliary Request 2.

• The patentee then filed a further submission addressing the basis for the amendment.

• At the oral proceedings, the patentee was heard only on admissibility, but once the request was not admitted, the debate was closed, and the patentee was left without being able to present its case on the substance of that request.

• Patentee raised a Rule 106 objection (right to be heard).

𝐈𝐬𝐬𝐮𝐞 𝐛𝐞𝐟𝐨𝐫𝐞 𝐭𝐡𝐞 𝐄𝐧𝐥𝐚𝐫𝐠𝐞𝐝 𝐁𝐨𝐚𝐫𝐝:

Did the Board consider the further submission of the Patentee before making a decision?

And if not, what was considered a substantial procedural violation?

𝐑𝐞𝐚𝐬𝐨𝐧𝐢𝐧𝐠:

• The appealed decision did not address the content of the Patentee’s submission, even though it was addressing the point the Board had treated as decisive for admissibility.

• A EBoA made a clear distinction between two situations: a) a submission is considered but rejected, even though it was with incorrect or insufficient reasoning, and b) decisive submissions are not considered at all.

Only the second situation was found to be a procedural violation of the right to be heard.

• The opponent argued that the submission could simply have been disregarded under Article 13(2) RPBA. But the EBoA rejected that and held that, if the Board had excluded the submission on that basis, the decision should have said so, even briefly. The absence of any such reasoning indicated that the submission had not been taken into account.

Decision in German here: https://lnkd.in/dVVpevde