3 Oct 2016

T 1033/16 - Not signed by examiner

Key points

  • The Board notes that the appealed decision to refuse the application, was not signed by second Examiner, but by the Director. This is unallowable under Article 18 EPC and a substantial procedural violation. The case is remitted.

T 1033/16 -  link

Reasons for the Decision
1. The appeal complies with the provisions referred to in Rule 101 EPC and is therefore admissible.
2. It follows from Article 18(1) EPC that the examining division is responsible for the examination of a European patent application, which includes the taking of a decision on the refusal of the application. In so far as this duty of the examining division has not been entrusted by a decision of the President of the EPO under Rule 11(3) EPC to other employees of the EPO, such a decision is to be taken by all its members in accordance with Article 18(2) EPC.

3. To allow verification by parties to proceedings and by the public that official acts by the EPO are performed by the competent employees, Rule 113(1) EPC provides that any decisions, summonses, notices and communications from the EPO are to be signed by, and state the name of, the employee responsible. According to Rule 113(2) EPC, where such a document is produced by the employee responsible using a computer, a seal may replace the signature.
4. In the present case, the decision refusing the application was notified to the appellant on EPO Form 2061. This form was produced using a computer and states the names of the employees responsible for the decision. It further includes the seal of the EPO. The decision thus formally complies with Rule 113 EPC.
5. To the Board's knowledge, however, the presence of the EPO's seal on EPO Form 2061 does not guarantee that the decision was in fact taken by all members of the Examining Division. The consistent practice of the EPO is therefore that EPO Form 2061 (in case of a so-called "decision according to the state of the file" as described in Guidelines for Examination, C-V, 15) and EPO Form 2007 (in case of a "regular" refusal decision) are accompanied in the public file by EPO Form 2048.2, which bears the signatures of the members of the examining division (cf. Guidelines for Examination, E-IX, 4.1).
6. The signatures on EPO Form 2048.2 in the file of the present application include those of the first examiner and the chairman of the Examining Division. By signing the form these members have confirmed having taken part in the decision under appeal. But the form has been signed only on behalf ("i.V.", i.e. "in Vertretung") of the second examiner by the director.
7. It thus appears that the director has taken part in the decision-making process, not as a member of the Examining Division, but on behalf of the second examiner. Although the director presumably possesses the qualifications necessary to act as a technically qualified examiner, it is - with the exceptions set out in decisions by the President of the EPO under Rule 11(3) EPC - contrary to Article 18 EPC if the duties of a member of an examining division are carried out by a person not a member of that examining division. Decisions under Rule 11(3) EPC deal with the delegation of duties involving no technical or legal difficulties to formalities officers and have no bearing on the present case.
8. An alternative, but in the Board's view less natural interpretation of the director's signature is that it confirms that the second examiner did in fact fully take part in the decision-making process but had, for some reason, merely been prevented from signing it. But as the Enlarged Board has stated in decision G 12/91 (OJ EPO 1994, 285), reasons 7.1, a decision taken by an examining or opposition division following written proceedings comes into existence, albeit only "in camera", when it is signed by the division's members. The act of signing the decision is thus an indispensable element of a member's fully taking part in a decision taken in writing. Therefore, even if the alternative interpretation were the intended one, the conclusion would be that the contested decision has not been validly taken by all members of the Examining Division.
9. Hence, this Board comes to the same conclusion as the deciding board in case T 211/05, which dealt with an essentially identical factual situation. Since the decision under appeal has not been validly taken by the Examining Division in its correct composition, the decision is to be set aside and the case is to be remitted to the Examining Division for further prosecution. Since this substantial procedural violation is the immediate cause for the remittal, it is equitable to reimburse the appeal fee under Rule 103(1)(a) EPC.
10.As explained in decision T 211/05, instead of signing the decision on behalf of the second examiner, the director could have formally changed the composition of the Examining Division if the return of the second examiner could not be awaited. The replacement second examiner would then have had to make him- or herself familiar with the case to the extent that he or she could have fully participated in the decision-making process. The Board notes that in this respect no difference exists between a decision "according to the state of the file" taken following a corresponding request by an applicant and a "regular" refusal decision. Such a request by an applicant by no means permits, let alone obliges, an examining division to immediately conclude the examination proceedings as a mere formality with a decision issued in standard form; rather, the examining division will have to verify inter alia whether it is in fact in a position to adopt the opinion and reasons expressed in its last substantive communication as its definite stance on the case.
11. The Board further notes that EPO Form 2701, relating to the question of interlocutory revision, was signed (below the crossed box "Examining Division") by the first examiner, the chairman and, again on behalf of the second examiner, by yet another person.
However, assessing whether to grant interlocutory revision or not is a duty of the department whose decision is contested (see Article 109(1) EPC). EPO Form 2701 should therefore not have been signed for the Examining Division by a person who was not a member of it.
12. Since the substantive submissions filed by the appellant in connection with the appeal are now part of the file, the Examining Division in its further prosecution of the case cannot confine itself to issuing a properly signed identical decision.
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the department of first instance for further prosecution.
3. The appeal fee is to be reimbursed.

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