Keeping the Doors Open – R 3/11

The last decision of the EPO’s Enlarged Board of Appeal (EBOA) addresses the critera of an objection under Rule 106 EPC, which reads:

A petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings.

This is what the EBOA has to say about the nature of the objection (Reasons 3.1):

Raising an objection pursuant to Rule 106 EPC is a procedural act and, when it is possible, a precondition for access to review by the Enlarged Board. It is an extraordinary legal remedy against final decisions of the Boards of Appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognize immediately and without doubt that an objection pursuant to Rule 106 EPC is intended. For the same reason such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on.

And further on:

… apart from, the usual phrases that the parties addressed the Board, after which the matter was discussed with the parties, and the reciting of the requests of the parties, the minutes contain the following:

"The Chairman asked the parties if they had any other Observations or requests and there were none."

This clearly contradicts the petitioner's position that the objection pursuant to Rule 106 EPC was in fact raised.

The absence in the minutes of an objection under Rule 106 EPC and of any request for correction of the minutes are strong indications, that such objection, if any, was at least not duly qualified, which is a necessary condition (see point 3.1 above).” (emphasis added)

In order to keep the possibility for filing a petition to review under Art. 112a (2) EPC, it is therefore highly advisable to take care that the objection as well as the decision to dismiss the objection figures in the minutes. Apparently simply murmuring the “usual phrases” (whatever these may be?) are not sufficient for this purpose.