4.4.2 Rule 104(b) EPC – failure to decide on a party's request

According to R. 104(b) EPC, a fundamental procedural defect under Art. 112a(2)(d) EPC may have occurred where the board decided on the appeal without deciding on a request relevant to that decision. Like R. 104(a) EPC (see in this chapter V.B.4.4.1), R. 104(b) EPC also reflects an aspect of the right to be heard (R 21/11).

In R 19/10 it was acknowledged by the board that the EPC does not contain an explicit definition of the term "request". However, according to the common practice in the proceedings before the EPO, requests are in general directed to executable legal consequences sought by the parties. The arguments provided by the parties in support of these legal consequences do not normally belong to the legally binding requests (see also R 17/11). In R 3/14 the board explained that only requests submitted in writing or requests which the party had been recorded in the minutes of the oral proceedings fell under R. 104(b) EPC (see also travaux préparatoires, CA/PL 5/02 Rev. 1 Add. 1, p. 27). In R 19/10 the board further held that it was not a procedural duty of the boards of appeal under R. 104(b) EPC to analyse the submissions of the parties in order to identify potential requests which were not explicitly made (see also R 17/11).

A request "relevant to that decision" within the meaning of R. 104(b) EPC is a request that could possibly have led to a different decision (R 21/11).

In the proceedings under review in R 17/13 the petitioner requested remittal of the case coupled with reimbursement of the appeal fee on the grounds of a substantial procedural violation, alternatively that the patent be maintained as granted, and finally oral proceedings. The board held oral proceedings and refused the request for maintenance of the patent and for reimbursement of the appeal fee. The Enlarged Board held that the petitioner's request for remittal was only relevant in the event of there having been a substantial procedural violation, which was held not to be the case.

In R 15/09 the Enlarged Board held that a decision to revoke a patent necessarily includes the rejection of all auxiliary requests.

In the appeal proceedings under review in R 13/14 the appellant had requested that the examining division's refusal of its request to hold oral proceedings in Munich instead of in The Hague be set aside. The board had stated, in the reasons for the decision, that it was not empowered to decide on this request. The Enlarged Board held that this statement, even if not expressed in the usual and formal terminology, had to be considered as a decision on the appellant's request.

In R 10/08 (see also R 6/14), the Enlarged Board referred to G 12/91 (OJ 1994, 285) and stated that the last point in time to intervene is not the moment a decision is announced but the moment at which the chairman declares the debate closed for deliberation. The petitioner should then have requested that the debate be re-opened if it intended to file a further request. Whether the petitioner intervened during or after the announcement of the decision is not relevant.

In R 11/08 the Enlarged Board dismissed the petitioner's allegation that the board had not ruled on a request which it had considered too general.

In R 16/14 the Enlarged Board held that since the condition underlying conditional request (iii) in the proceedings under review (namely, that the board of appeal took the position that an examining division had the option to ignore arguments advanced by an applicant) was not met, the petitioner's allegation that conditional request (iii) had become relevant again for the written reasons of the decision under review and should have been decided upon did not hold. As a consequence, the Enlarged Board held that the claim of infringement of R. 104(b) EPC must be dismissed.

In R 14/10 the Enlarged Board confirmed that, if a party's request is unclear, it is the duty of the deciding body to ask for clarification before deliberation (see also R 7/14). However, if the requests as read out by the chairman in conformity with Art. 15(5) RPBA 2007 do not correspond to a party's intention, it is that party's duty to intervene at that point. In R 12/14 the Enlarged Board stated that if a party submits written requests which the board is entitled to regard as the party's final requests under Art. 15(5) RPBA 2007, the board can also safely assume that these requests are complete.