T 1254/11 - Reducing enlarged OD

T 1254/11 - link- [C]

EPO Headnote
1. An opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can in principle be reduced again to three members. It is for the four-person panel to decide on the reduction. In this respect the board concurs with T 990/06. In deciding on the reduction, the opposition division consisting of four members must properly exercise its discretion. (See point 1.4)

2. The board assumes arguendo that the fact that no decision to enlarge nor a decision to reduce the opposition division was added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constitute fundamental deficiencies of the proceedings before the opposition division.

However, different from the situation in T 990/06, it is possible to determine from the file that the division was lawfully enlarged and, at a later stage, lawfully reduced again. (See points 1.6 and 1.7)

The board considers that these circumstances constitute special reasons for not remitting the case within the meaning of Article 11 RPBA. The aforementioned fundamental deficiencies assumed arguendo are of a formal nature. They would, in the board's view, not justify substantially delaying the proceedings. (See point 1.9)

Key points

• " In European patent procedure there is no such legal concept as "rügeloses Einlassen", a term known in German civil procedure and referring, in principle, to the loss of the right to a certain objection by participating in the debate, especially in a hearing, without raising that objection.
• The Board introduces EU case law: " The board also informed the parties about two decisions handed down by the General Court of the European Union in cases T-251/00 [and] T-488/09 [.] The board considers that the answer is plain and that therefore no opinion of the Enlarged Board is required []. The board holds that the principle enunciated by the General Court in case T-251/00, also applies in European patent law, i.e. an opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can be reduced again to three members and it is for the four-person panel to decide on the reduction. 
• 
  

The decision under appeal indicated on page 1, at point 8 of the part "Facts and Submissions" that "[t]he enlargement of the division by a legally qualified examiner has been set aside on 22.03.2011 since no witness need to be heard anymore".

Reasons for the Decision

1. Primary request: remittal under Article 11 RPBA

1.1 The request

In its reply of 12 August 2015 to the board's communication attached to the summons for oral proceedings (hereinafter referred to as "the reply"), the patentee for the first time in the present appeal proceedings asserted that the decision under appeal was tainted by a substantial breach of procedural provisions of the EPC. More specifically, the patentee was of the opinion that the lawful composition of the opposition division as required by Article 19(2) EPC was not ensured during the opposition proceedings which led to the decision under appeal. As a consequence, pursuant to Article 11 RPBA and following the findings in the decision in case T 990/06, in particular at points 2.4 and 3.2 of the Reasons, the case had to be remitted to the opposition division.

Article 11 RPBA reads as follows:

A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

[...]

1.3 Whether the patentee's objection relating to the composition of the opposition division can be dealt with in the present appeal proceedings

The patentee maintains that this is a question to be examined ex officio and therefore can be brought up at any time during the proceedings.

The board, in principle, agrees with the patentee on this point. In European patent procedure there is no such legal concept as "rügeloses Einlassen", a term known in German civil procedure and referring, in principle, to the loss of the right to a certain objection by participating in the debate, especially in a hearing, without raising that objection. The opponent has not provided facts and evidence according to which such a concept could be relied on under Article 125 EPC 1973. What is acknowledged in European patent procedure is the concept of abandonment. However, the mere fact that the patentee did not raise the objection relating to the composition of the opposition division before its submission of 12 August 2015, i.e. roughly one month before the oral proceedings before the board, cannot be considered to amount to the abandonment thereof.

Nevertheless, the board holds that Article 13(1) RPBA does apply to submissions made after the filing of the statement of grounds relating to matters that need to be examined ex officio given that such submissions are covered by the term "amendment to a party's case".

In the present case, the board admits the objection relating to the composition of the opposition division pursuant to Article 13(1) RPBA. The point having been raised about one month before oral proceedings the board considers that there was enough time both for the opponent and the board to deal with it, and the opponent in fact did make substantial submissions on the topic.

1.4 Whether an enlarged opposition division can in principle be reduced again

As can be seen from the summons for oral proceedings of 23 September 2010 and the enclosed order to take evidence, the opposition division originally composed of three technical examiners (chairman, primary and second examiner) was, as a matter of fact, enlarged by a legally qualified member. It is also clear that the decision to cancel the oral proceedings of 24 March 2011 and the decision to revoke the patent (i.e. both the decision document of 25 March 2010 and the reasoned decision of 31 March 2010) were adopted by only three examiners, i.e. without the legally qualified member. It follows that the enlargement, as a matter of fact, must have been undone in between.

The patentee argued that there was no legal basis for reducing the four-examiner panel to three. Only the opposite case, i.e. the enlargement, was dealt with in the EPC, i.e. in its Article 19(2), fourth sentence.

The opponent said reduction was possible due to the efficiency rule ("economic principle").

The board, in the hearing, drew the patentee's attention to T 990/06 on which the patentee heavily relied in general, and in which the possibility of a reduction was taken for granted (see points 2.1 in fine and 2.4, first paragraph). The patentee answered that it did not rely on this particular point of the decision. The board also informed the parties about two decisions handed down by the General Court of the European Union (formerly referred to as Court of First Instance) in cases T-251/00 of 20 November 2002 and T-488/09 of 12 May 2011. In T-251/00, affirmed by T-488/09 (see point 106), it was held that in accordance with a general principle of law that, in principle, a body which has power to adopt a particular legal measure also has power to abrogate or amend it by adopting an actus contrarius, unless such power is expressly conferred upon another body. (See point 130.)

In T-392/04 of 14 December 2006 the Court concluded from this principle that a decision could only be validly corrected by all members of a board of appeal (of OHIM) and not by the rapporteur alone (see point 53).

The patentee would prefer the Enlarged Board of Appeal to give an opinion on whether the principle also applied in European patent law.

The board considers that the answer is plain and that therefore no opinion of the Enlarged Board is required (see, in greater detail, below, at point 2.4). The board holds that the principle enunciated by the General Court in case T-251/00, also applies in European patent law, i.e. an opposition division enlarged to four members pursuant to Article 19(2) EPC 1973 can be reduced again to three members and it is for the four-person panel to decide on the reduction. In this respect the board concurs with T 990/06 (see points 2.1 in fine and 2.4, first paragraph). In deciding on the reduction, the opposition division consisting of four members must properly exercise its discretion. The reasons for these findings are as follows:

First, to the General Court, the principle quite obviously is basic so that it did not need to further explain it. The board concurs and considers that it is also a principle of procedural law generally recognised in the Contracting States to the EPC pursuant to Article 125 EPC 1973.

Second, the principle is required by the need for procedural efficiency following from various provisions of the EPC, notably Article 114(2). Procedural efficiency requires that, once the reason for enlargement, e.g., as in the case at hand, the hearing of witnesses, is considered to have ceased to exist, then no need is apparent for maintaining the enlargement based on this reason. The opponent was right to make this point. It should be added that where a four-person division delivered the decision, then a five-member appeal board needs to hear the case, instead of a board composed of three members; see Article 21(3)(b). This provision lends added weight to the efficiency criterion.

Third, the opposition division, in deciding on whether to reduce, has discretion and must use it properly.

It may be true that there may be situations in which the (sole) original reason for enlargement may have ceased to exist, but where, in the deliberations of the four members of the division made in the course of the proceedings, other reasons for enlargement may have arisen. In such a situation the division would need to maintain its enlarged composition.

Furthermore, as the patentee pointed out, there may be situations in which the division may not have been unanimous in its assessment of the issues surrounding the case. The legal examiner may have sided with the chairman, and thus a specific approach may have been followed which was in contrast to the view of the other two technical examiners. Where such is the case, one might consider that the four-person composition should also be upheld in order to avoid a situation in which the stance would arbitrarily be upended. However, the danger that such a decision to reduce would be taken in the four-person composition is unlikely, as the chairman and the legal member have the majority. This follows from the last sentence of Article 19(2) EPC 1973 according to which "[i]n the event of parity of votes, the vote of the Chairman of the [Opposition] Division shall be decisive".

1.5 Whether the discretion to reduce the enlarged opposition division was properly exercised in the present case

In the present case, different from what the patentee asserts, there is no indication of an improper exercise of discretion. The patentee's two theories developed in this respect are not persuasive:

[...]

1.6 Whether the right body took the decision to reduce the opposition division from four to three examiners

As found above, at point 1.4, an enlarged opposition division consisting of four members can be reduced again, and it must be the four-person panel that decides on the reduction.

The board is satisfied that this principle was complied with in the present case, more specifically that the opposition division was reduced on 22 March 2011, as stated at point 8 of the part "Facts and Submissions" of the decision under appeal. Point 8 literally reads as follows: The enlargement of the division by a legally qualified examiner has been set aside on 22.03.2011 since no witness need to be heard anymore.

Point 8 does not indicate who took the decision, but absent any indication to the contrary, it must be assumed that the decision was adopted in a lawful manner, i.e. that the whole of the panel comprising four persons took it.

The members of the division are officials entitled to grant or refuse European patent applications, or to maintain or revoke European patents. It must therefore be considered to be within their capacity to also confirm specifics of the patent proceedings, such as the reduction of an opposition division from four to three members.

As long as there are no hints to the contrary, as in the present case, the division must be presumed to have acted lawfully. The patentee confirmed in the hearing that there were no such hints, but that it wanted to verify the decision to reduce in question. Whether the patentee has such a right will be discussed in the following section below.

1.7 Whether the decisions pertaining to the composition of an opposition division need to be added to the public file at any essential point of the proceedings

To support its request for remittal due to a fundamental deficiency of the proceedings before the opposition division pursuant to Article 11 RPBA, the patentee heavily relied on the decision in case T 990/06 (with the exception of the fact that the board took the legal possibility of a reduction of an enlarged division for granted; see point 2.1 in fine.)

At point 2.1 of this decision, the board indeed held that

Article 19(2) EPC [1973] contains clear instructions on how an opposition division, as a rule, has to be composed. Thus the parties know which decision-making body conducts, and takes the decision in a set of oral proceedings on the case. This makes it possible for the parties to scrutinise compliance with the provisions of Article 19(2) EPC [1973] as well as the impartiality of the members of this decision-making body pursuant to G 5/91 (OJ EPO 1992, 617). For this reason it is indispensable that the composition of the opposition division is clear and verifiable at any essential point in time in the course of the opposition proceedings. For this reason it is furthermore indispensable that the procedure to enlarge the opposition division by a legally qualified member pursuant to Article 19(2) EPC [1973] has to be subject to scrutiny. The same applies as a matter of course to the possible retirement of a member from the division if the reason for his or her participation has ceased to exist. (Translation made by the board; emphasis added.)

The board in T 990/06 also held (at point 2.4) that where an opposition division was enlarged by a legally qualified member, the file would have to include a respective decision signed by the three members of the opposition division. If the enlargement had subsequently been set aside, then the file would need to also include the respective decision, signed by all four members. Furthermore, if there were doubts as to the lawful composition of the opposition division, then doubts would also arise as to the legality of the decision that it adopted (see point 2.5 of T 990/06).

In this respect, the present board would first like to point out that, in the cited decision in case G 5/91, the Enlarged Board held (at point 5) that no separate appeal lay in principle from a decision regarding the composition of the opposition division:

There is no legal basis under the EPC for any separate appeal against an order of a director of a department of the first instance such as an Opposition Division rejecting an objection to a member of the division on the ground of suspected partiality. However, the composition of the Opposition Division may be challenged on such a ground on appeal against the final decision of the division or against any interlocutory decision under Article 106(3) EPC [1973] allowing separate appeal. If not all the members of an Opposition Division should have fulfilled the requirement of impartiality, there has occurred a procedural violation as to the composition of the Opposition Division, normally rendering the decision void. It lies clearly within the competence of the Boards of Appeal to consider and decide on whether the requirements concerning the composition of an Opposition Division have been fulfilled.

If no separate appeal lies in principle from a decision regarding the composition of the opposition division, then questions arise in relation to the view expressed in T 990/06 that "it is indispensable that the composition of the opposition division is clear and verifiable at any essential point in time in the course of the opposition proceedings" (emphasis added). If necessary, the correctness of the composition has to be assessed once the proceedings before the opposition division have come to an end by virtue of the adoption of a final decision, i.e. by a board of appeal in the context of the examination of that decision under appeal.

To show a more general contrast to T 990/06, the board, during the oral proceedings, handed over a copy of the decision in case T 160/09 to the parties. In point 12.5 of that decision it is said:

The board therefore concludes that the patentee has failed to establish a transparency principle which would, according to Article 125 EPC 1973, require the EPO to publish the appointment procedure of examiners. The board also finds that the patentee has not established that the replacement of the second examiner in the present case infringed on its right to be heard or constituted a fundamental procedural defect for other reasons. (Emphasis added.)

For the sake of completeness, the board adds that the facts underlying the decision in case T 990/06 differ significantly from those in the case at hand. In that case there was, in particular, a discrepancy between internal documents and those sent to the parties.

Against the backdrop of the above case-law, the board, in the present case, considers it appropriate to leave the question of whether the decisions pertaining to the composition of an opposition division need to be added to the public file at any essential point of the proceedings undecided. This is because, in the present case, the board has no doubt that both the decision to enlarge the opposition division and to reduce it again at a later stage were each indeed lawfully adopted at proper points in time. This finding will prove to be sufficient for the board's decision on whether or not to remit the case under Article 11 RPBA. See below, at point 1.9.

As to the enlargement of the division preceding the summons to oral proceedings before the opposition division, there was not much debate during the oral proceedings before the board, with the patentee focusing on the reduction of the division. The board, in respect of the enlargement, relies on the correctness of the statement made at the beginning of the communication (dated 21 September 2010) accompanying the summons of 23 September 2010 that "[t]he opposition division ... has been enlarged by a legally qualified examiner (Article 19(2) EPC)" (as quoted by the patentee; see above, at point 2.1, second paragraph). This statement was later affirmed in point 5 of the part "Facts and Submissions" of the decision under appeal reading in pertinent part:

Oral proceedings are appointed and scheduled for April 5 and 6, 2011. The opposition division is enlarged by a legally qualified examiner as witnesses need to be heard in order to prove the alleged prior uses (V1, V3).

In line with the statement in the communication just quoted, as correctly mentioned by the patentee (see above, at point 1.2), both the summons for oral proceedings before the opposition division of 23 September 2010 and the accompanying order to take evidence were signed by four members of the opposition division.

As to the core of the debate, i.e. the reduction of the enlarged opposition division, the board is convinced of the veracity of point 8 of the part "Facts and Submissions" of the decision under appeal affirming that the decision to reduce the division was indeed lawfully taken. See already above, at point 1.6.

1.8 The replacement of the chairman

The patentee also criticised the fact that the file contained no document explaining the change of the chairman. But the patentee did not cast doubt in principle on the possibility to replace a chairman. The board considers that this is possible and refers in this respect to the decision in case T 160/09 (at point 11) dealing with the replacement of members of an examining or opposition division, including the chairman:

The appointment and possible replacement of members of the examining (and opposition) divisions are amongst the "necessary steps" which by Article 10(2)(a) EPC 1973 the president is empowered to take to ensure the functioning of the European patent office. The president may delegate these powers under Article 10(2)(i) EPC 1973. In this respect, Rule 12(1) EPC 1973 provides that examining divisions are grouped together administratively so as to form directorates. In the board's view this implies that the president delegates decisions about administrative matters regarding the examining divisions, including the appointment and replacement of members, to the directorates.

In the present board's opinion, the latter implication, by analogy, applies to opposition divisions.

As to the question of who acted as chairman at the essential points in time, the board notes the following: it ensues from the file that the new chairman acted on 24 March 2011 when the oral proceedings were cancelled, the signature (without the name in block letters) corresponding with the signature on the decision document of 25 March 2011 to which the name was added in block letters. The same new chairman was also mentioned in the reasoned decision of 31 March 2011. The new chairman was appointed on 23 February 2011. The rapporteur informed the parties during the oral proceedings that this information was found in the internal EPO register. The board deduces therefrom that the new chairman also took part in the decision to reduce the enlarged opposition division on 22 March 2011, i.e. two days before the oral proceedings were cancelled.

In the light of the foregoing the board has no doubt as to the correctness of the replacement of the chairman. After the information on the date of replacement had been provided by the board during the oral proceedings, the patentee did not make additional submissions on this point.

1.9 The consequence: whether to remit or whether special reasons present themselves for not remitting the case to the opposition division

Pursuant to Article 11 RPBA, already quoted above, a "board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise".

In case T 990/06, the board, having found it to be impossible to determine the composition of the opposition division at any essential point in time, remitted the case. In doing so, it considered, but rejected the other party's objection that remittal would substantially delay the proceedings. The fundamental deficiency prevented it from continuing the proceedings. (See point 3.2. of T 990/06)

Conversely, pursuant to T 515/05, cited by the opponent, even though a fundamental deficiency had become apparent, the board still exercised its discretion in not remitting the case. The board (at point 4.4) held that denying the opponent (appellant) the opportunity during the oral proceedings to comment on a ground of opposition (Article 100(b) EPC), albeit brought into the case by the Opposition Division itself, constituted a substantial procedural violation (Article 113(1) EPC). The reasons for still not remitting the case were as follows:

5.2 Although according to Article 10 of the RPBoA [now Article 11] a Board should usually remit a case to the Division at first instance if a fundamental deficiency arises, remittal is not an automatic consequence and if special circumstances exist the Board may decide otherwise.
In the present case, the Board considers that remittal is not appropriate, essentially because (i) the arguments of the Appellant concerning Article 100(b) EPC... were taken into account in the decision under appeal ... by the Opposition Division on [sic] its own motion (these arguments de facto being those produced by the Opposition Division itself when introducing this new ground ...), (ii) the Appellant in the meantime has had the opportunity, and indeed availed itself of it, to expand its argumentation in this respect before the Board, and (iii) no concrete reason was given by the Appellant for the necessity for remittal (e.g. no intention was declared for the production of further evidence which would need more time for preparation). In the circumstances a remittal to the Opposition Division would only unnecessarily delay the proceedings.

The board leaves the question open whether T 515/05, whose conditions might be met in the present case, should be followed.

The board assumes arguendo, and favourably for the patentee, that the fact that no decision to enlarge nor a decision to reduce the opposition division was added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constitute fundamental deficiencies of the proceedings before the opposition division.

However, different from the situation in T 990/06, it is possible to determine from the file that the division was lawfully enlarged and, at a later stage, lawfully reduced again. This follows especially from points 5 and 8 of the part "Facts and Submissions" of the decision under appeal, as explained above, at points 1.6 and 1.7.

The board considers that, independent of the considerations in T 515/05 just mentioned, these circumstances constitute special reasons for not remitting the case within the meaning of Article 11 RPBA. The aforementioned fundamental deficiencies assumed arguendo in favour of the patentee are of a formal nature. They would, in the board's view, not justify substantially delaying the already lengthy proceedings (the filing date of the patent application is 10 January 2002, and the date of publication and mention of the grant of the patent is 30 May 2007).