The Petition for Review procedure at the European Patent Office (EPO) is a limited form of judicial review enabling parties to have the Enlarged Board of Appeal review decisions made by an EPO Board of Appeal and vacate such decisions if it is established that a fundamental procedural error has occurred. The review is strictly limited to a procedural review and does not involve a review of technical or legal matters considered by the Board of Appeal.
Prior to 2020, these Petitions for Review were typically resolved in about 10 months, providing parties with a swift resolution as to whether or not a Board of Appeal decision might be vacated. However, since then, the EPO has experienced a significant increase in the volume of petitions leading to a substantial backlog.
At the end of 2019, 23 Petitions for Review were pending before the Enlarged Board. In contrast, at time of writing in November 2024, that number had almost exactly doubled to 45.
At the same time, the processing times for resolving Petitions for Review have increased significantly.
By way of example in the second half of 2024, the Enlarged Board of Appeal issued decisions on three Petitions for Review: R13/22, R4/22 and R1/20 which had been pending for over two and a half years; over three years; and four and a half years respectively.
Further investigation of the pending Petitions for Review reveals that the lengthy processing times of R13/22, R4/22 and R1/20 are far from being unusual.
11 Petitions for Review relating to Board of Appeal decisions from 2021 and 2022 were still pending as of November 2024. Oral Proceedings to resolve these cases have now been scheduled and the cases should now all be resolved in 2025.
Of the 22 pending Petitions for Review relating to decisions issued in 2023, Oral Proceedings have been scheduled for only 8 of those cases. This includes R 13/24 where Lord Justice Richard Arnold specifically requested accelerated processing in view of pending infringement and revocation proceedings before the Court of Appeal of England and Wales which had been stayed pending the outcome of this review.
Although further Oral Proceedings may be scheduled, this would seem to indicate that the majority of 2023 Petitions are unlikely to be resolved next year. Where Oral Proceedings have been scheduled on average more than 19 months will elapse between the filing of a Petition against a decision from 2023 and Oral Proceedings actually being held.
Finally, with only one exception – R17/24 in which a summons for Oral Proceedings was issued uncharacteristically fast – just one month after commencement of proceedings, none of the pending Petitions for Review relating to decisions from 2024 have been scheduled for consideration at Oral Proceedings. That is not entirely unexpected given that such Petitions will have been filed recently and have been pending for only a few months.
The following table shows the average times for certain events to take place during review proceedings for Petitions for Review filed from 2018 to 2024. It is clear that the time taken after the initial filing of the Petition for Review for proceedings to commence increased significantly from an average of 25 days in 2018 to 85 days in 2023. Although, processing times in 2024 for the commencement of proceedings were significantly reduced.
By far the most serious source of delay has been the time taken for Oral Proceedings to be scheduled, with this figure steadily trending upwards. As not all cases from 2023 have yet to have Oral Proceedings scheduled, the figures in the table below for 2023 will increase in due course.
*for a more accurate view of what Applicants can expect, a major outlier (R 8/19) has been removed from this average.
When depicted graphically, a trend of increasing processing time from filing to Oral Proceedings taking place is apparent (with the figure from 2023 being omitted in the following as, as noted above, that data set is not yet complete).
The increasing processing times for Petitions for Review are concerning for several reasons.
Delays in resolving Petitions for Review create prolonged uncertainty for the parties involved. When a patent’s status remains unresolved, it complicates business decisions related to product development, market entry, licencing agreements and investment. For businesses, in rapidly evolving sectors, such uncertainty can hinder innovation and market growth as companies hold off critical decisions until they have clarity on their patent rights.
Filing a Petition for Review does not cause a challenged decision to be suspended. This presents particular problems for patentees whose rights may have been incorrectly invalidated. If an opponent’s patent challenge is erroneously dismissed, an opponent always has the option to pursue such a challenge through the national courts or now potentially through an invalidation action in the Unified Patent Court. However, where a patent is erroneously revoked, a patentee’s patent ceases to exist and is not reinstated unless and until the Enlarged Board rules in the patentee’s favour. Even then the restored patent is subject to intervening rights of third parties who make substantial preparations to implement an invention during the period between the erroneous revocation and the patent being re-established.
Although very few Petitions for Review are successful, it is important for the EPO to rule on petitions promptly to ensure that the window of opportunity for third parties to establish intervening rights is as limited as possible, particularly as if a Petition for Review is successful, that will have established that the original erroneous revocation occurred due to a fundamental error on the part of the EPO.
When the European Patent Convention was revised in 2008 to include the Petition for Review procedure, the explanatory remarks to the EPC 2000 stated that: “the possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties” and that the establishment of a special three-member panel of the Enlarged Board to screen petitions for review was in the “interest of quick and effective” processing and that it was intended that “the proceedings before [the] panel shall be as simple and short as possible.”
With a minority of Petitions for Review now being resolved in less than 18 months and the processing time for some Petitions reaching or exceeding 4 years, it is clear that the original promise of a quick and simple resolution of Petitions for Review, which the EPO previously was admirably achieving, is no longer being met.
