The EPO has announced the issue of the Enlarged Board of Appeal's full reasoning in referral G 2/19. As previously noted on IPKat, the Enlarged Board of Appeal (EBA) had previously released their decision in G 2/19 but had not published the decision (EPO press release). 

The referral originated from the Board of Appeal decision T 831/17. The appeal related to a case in which a third party had submitted observations pursuant to Article 115 EPC that a patent application (EP2378735) lacked clarity. Clarity is not a ground for opposition. The third party was therefore not able to oppose the subsequently granted patent on the same ground.

In order to pursue their clarity objection to the now granted patent, the third party filed an appeal against the decision to grant. The appeal was considered inadmissible. The Board of Appeal also referred the question to the EBA of whether the right to oral proceedings in appeal proceedings is limited if the appeal is evidently inadmissible. The referral also asked the question of whether the relocation of the Boards of Appeal to outside Munich contravened a party's right to be heard.

Prior to the decision, the Haar/Munich aspect of the referral was covered by IPKat here, and the oral proceedings issue was covered in more detail here. The referral attracted a number of amicus curiae, including submissions from EPI and CIPA.

With regards to the questions concerning the right to oral proceedings, the EBA answered:

A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.

In other words, a third party who has filed an inadmissible appeal regarding the decision to grant a patent, is not entitled to oral proceedings in appeal in order to discuss the third party's clarity objections. The EBA therefore closed the door (again) to the possibility that clarity may be discussed as a ground of opposition in appeal proceedings.

Haar is also a type of sea fog...

Turning to the Haar/Munich question, the issue of whether Haar is in Munich arose following the controversial relocation of the Boards of Appeal  from central Munich to Haar. Haar is outside the boundaries of the city of Munich. As pointed out by the EBA, part of the purported purpose of the relocation was to protect the independence of the Boards.

The referred question asked whether situating oral proceedings in Haar contravened a party's right to be heard. The EBA found that this was not the case. In particular, the EBA answered:

Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

The EBA also observed that the Boards of Appeal were located only slightly outside the boundaries of the city of Munich...

The G 2/19 decision is currently only available in German. This Kat is therefore currently forced to rely on the EPO summary. Stay tuned to IPKat for further commentary once an English translation becomes available.

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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