Challenges to EPO decisions: a rational basis for irrationality

Sean Gilday

When he posted "The IPKat and his Blogging Friends -- a 2013 Round-up", here, last week, this Kat concluded with a call for new bloggers, or at least aspiring bloggers to stand up and make themselves known.  One such gallant soul to do just that is Sean Gilday, a trainee patent attorney at Page Hargrave, Bristol, who has served time as an examiner at the UK Intellectual Property Office. The following is Sean's take on a decision of the Enlarged Board of Appeal at the European Patent Office that struck his attention:

An Appeal on the Ground of Irrationality

In response to Jeremy's recent call-to-arms for more blog contributors, I decided to chip in with a short article about a recent decision by the Enlarged Board of Appeal (BoA) at the EPO. I say "I" and not "this Kat", since I'm not a member of the blogging team (additionally, the anagramised versions of some of my attributes -- "I'm a CPA student" and "used to be a Civil Servant" become "stupid cat name" and "never debut via cat alias" respectively -- lead me to believe that something sidereal dictates that I shouldn't...). However, I will do my best!

The case is R 0019/1 and it concerns, inter alia, Art. 112a of the European Patent Convention (EPC), which contains the grounds upon which a party adversely affected by a decision of the Board may appeal against that decision. 

The decision in question was T 284/10, in which the Technical BoA dismissed an appeal by The Gates Corporation ('Gates') following the maintaining of a patent as granted. Gates was one of three opponents to the patent, the opposition of all parties having been rejected by the Opposition Division. After the Technical BoA dismissed the appeal against the rejection of the opposition in oral proceedings, Gates appealed and cited the grounds recited in Art. 112a EPC, namely that a fundamental violation of Art. 113 EPC had occurred --the right to be heard.

Following a communication in the summons to oral proceedings, in which Gates was informed that the petition may be found “clearly unallowable”, Gates wrote back in a letter of 3 September 2012, asking the Enlarged BoA to consider in its decision the grounds of irrationality, also known as 'Wednesbury Unreasonableness' as established in Associated Provincial Picture Houses v Wednesbury Corporation [1948]. This ground is an interesting feature of English case law, in which a decision by an authority may be subject to a judicial review on the ground that it was “so unreasonable that no reasonable authority could have decided that way”. An example of such a decision was given in Lord Justice Warrington in Short v Poole Corporation [1926] as ‘a red-haired teacher being dismissed because she had red hair’.

However, the Enlarged BoA was quick to nip this argument in the bud. In paragraph 2.4 of its Reasons of the Decision, the Board stated unequivocally that the grounds for appeal enumerated in Art. 112a constitute an exhaustive list: it was totally uninterested in incorporating anything analogous to the judicial review ground of irrationality (if nothing else, the sheer deluge of potential litigation to which such a move would expose the EPO would appear to prohibit this merely for reasons of pragmatism).

So this result was entirely expected. As the decision points out in its penultimate paragraph, this principle has been pretty thoroughly established in the case law of the BoA. Petitioners attempting to introduce additional grounds to those strictly recited in Art. 112a are likely to leave disappointed".

This Kat thanks Sean for his effort. With a bit of luck and some encouragement, he may pop up again, on this or other blogs, in the not-too-distant future. Merpel adds: if Sean can do it, perhaps you can too ...

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