R 0007/08 22-06-2009

I. This petition for review under Article 112a EPC concerns the decision of 6 May 2008 taken in case T 1375/06 by Board of Appeal 3.2.05, posted on 25 July 2008 and revoking European patent No. 1022115. The minutes of the oral proceedings of 6 May 2008 were posted on 20 May 2008. The petition was lodged together with its grounds by the patent proprietor on 2 October 2008 and the prescribed fee was paid on the same day. The petitioner alleges a fundamental violation of its right to be heard under Article 113 EPC, and a fundamental procedural defect within the meaning of Rule 104(b) EPC.

II. The proceedings before the Board of Appeal – as far as relevant for this petition – can be summarised as follows:

(i) Both oppositions against the patent in suit cited inter alia the ground of insufficient disclosure (Article 83 EPC). In its decision the opposition division disagreed with the opponents on that issue, but maintained the patent in amended form on the basis of the patentee's seventh auxiliary request due to lack of inventive step of all the preceding requests.

(ii) All parties lodged appeals, maintaining their requests and arguments made before the opposition division. In the annex to the summons to attend oral proceedings on 6 May 2008, the Board indicated its provisional opinion that the patent met the requirements of Article 83 EPC. In response to this communication, the appellant-opponent 02 maintained by a letter dated 6 March 2008 its view that the patent was not in line with Article 83 EPC because the description did not enable the invention to be carried out by a person skilled in the art.

(iii) When the issue of sufficiency of disclosure was discussed during the oral proceedings before the Board, two related questions were discussed: what general knowledge the skilled person could be presumed to have, and what the patent had to disclose explicitly in order to comply with Article 83 EPC. In presenting its case, the representative of the appellant-proprietor referred to two documents mentioned under paragraph 0033 in the description of the patent in suit. In its view, these documents established the general knowledge of the skilled person. The Board rejected the new documents and, at the end of the oral proceedings, announced its decision that the patent was revoked.

III. In support of its petition, the petitioner argues that the contested decision was based on aspects of insufficiency of disclosure which were discussed for the first time during the oral proceedings. As the Board refused its request to admit into the proceedings the two documents in question, it did not decide on a request relevant for the decision under Rule 104(b) EPC and furthermore its decision was based on a fundamental procedural violation under Article 113 EPC, as these documents were disregarded. If the Board had taken these documents into consideration it would have immediately realised the scope of the general knowledge of the skilled person and that the description disclosed the invention sufficiently within the meaning of Article 83 EPC.

IV. In a communication dated 14 January 2009 the Enlarged Board gave its preliminary opinion that the request for review was clearly inadmissible. Neither the grounds for the petition nor the minutes of the oral proceedings contain any indication that the requirements of Rule 106 EPC were fulfilled, i.e. an objection in respect of the alleged procedural defect had been raised during the oral proceedings and dismissed by the Board. Nor had the petitioner explained why, exceptionally, it had been unable to raise that objection.

V. The representative of the petitioner responded on 24 February 2009 that in the oral proceedings he had been taken by surprise when, in the context of sufficiency of disclosure, the question of the scope of the general knowledge of the person skilled in the art [production of polymer particles] had been raised for the first time and the Board had not considered his request to allow to provide documentary evidence about it. Ignoring this offer the Board had violated Rule 104(b) EPC as well as the petitioner's right to be heard under Article 113 EPC because it had negatively affected the Board's decision. The petitioner had become aware of that only when the decision was issued. In any case, the requirement of Rule 106 EPC – that the petition was only admissible where an objection in respect of the procedural defect was raised during the oral proceedings – was fulfilled, because it had objected to the fact that this particular aspect of Article 83 EPC was raised for the first time at the oral proceedings and the representative had offered evidence (2 documents cited in the patent in suit) to corroborate its arguments, however the offer was refused. According to the wording of the French version of Rule 106 EPC, it was not necessary to raise a further objection in order to be able to file a petition under Article 112a EPC.

VI. Since the impact of Rule 106 EPC was a question of fundamental importance within the meaning of Article 112(1) EPC, the petitioner requests the present Board to refer the following question to the Enlarged Board of Appeal:

"Pour l'application des dispositions relatives à l'admissibilité selon la règle 109 (2) a, est-il nécessaire de soulever le vice de procédure pendant la procédure orale ou de soulever une objection à l'encontre d'un motif de révocation qui pourrait constituer un vice substantiel de procédure s'il était retenu".