Key points
- In my post about T1891/20, I raised the question whether "it make sense to raise an objection under Rule 106 after the Board orally announces "its decision not to admit the auxiliary request into the proceedings"? Can a Rule 106 objection be raised pre-emptively before the Board commits the (perceived) procedural defect?"
- The Enlarged Board in this decision gives a partial answer, by finding that "an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".
- "The petitioner [patentee] submitted that the non-admittance of the auxiliary requests [filed with letter] of 13 January 2021 into the proceedings constituted a first fundamental procedural defect."
- "Regarding compliance with Rule 106 EPC, the petitioner referred to page 15, paragraphs 3 to 5, of the letter dated 13 January 2021 [where] the [patentee] announced, "for merely precautionary reason", that it would challenge "any contrary decision [i.e. to hold the auxiliary request inadmissible]" by filing a petition for review according to Article 112a EPC."
- The Enlarged Board: "Under Rule 106 EPC, the objection has to be raised in respect of "the procedural defect" and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence. The purpose of Rule 106 EPC is to give the Board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it (see also Case Law of the Boards of Appeal, 10th edition 2022, "CLBA", V.B.3.6.1 and R 3/20, point 2.2.1 of the reasons). In other words, an objection cannot be formulated prematurely (see R 8/08, point 1.2.2 of the reasons; R 17/10, point 2.3 of the reasons; R 21/11, point 10 of the reasons)."
- "The statements on which the petitioner is relying were contained in the letter dated 13 January 2021, with which the new claim requests were filed and, hence, at a point in time at which the Board had not yet taken any steps concerning these claim requests."
- Note, this leaves open that it is sufficient to object if a Board had taken some step concerning the admissibility of the claim requests.
- "As far as the appeal procedure subsequent to the filing of the letter dated 13 January 2021 is concerned, there is nothing on file - neither in the petitioner's submissions before the Enlarged Board nor in the minutes of the oral proceedings before the Board - which would suggest that the petitioner made submissions which could qualify as an objection under Rule 106 EPC."
- "the petitioner has not submitted - nor was it apparent to the Enlarged Board - that an objection could not have been raised during the appeal proceedings, for instance at the oral proceedings before the Board."
- " it must be concluded that the requirements under Rule 106 EPC have not been met in relation to the asserted procedural defect concerning the non-admittance of the auxiliary requests of 13 January 2021. As regards this complaint, the petition is therefore clearly inadmissible."
- Take away message: object, object, object; and repeat the objection all the time (until case law clarifies the right time to object).
- The petitioner also challenged the decision to hold the claim request inadmissible by arguing that the decision on that point was insufficiently reasoned, which in turn can qualify as a violation of the right to be heard. This
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/04/r-001121-when-to-object-under-rule-106.html
