T 2175/16 - Wrong Examiner signing

Key points

• In this opposition appeal case, the decision of the OD was signed on the signature page by a different person than the three members participating in the oral proceedings. The Board does not accept this and sets aside the decision.
• " It is established case law that a signed written decision issued after oral proceedings should be taken by those members of the first instance who conducted the oral proceedings, and no-one else. This principle applies also if the division delivers a decision orally during those proceedings." 
• It is not relevant that the decision to revoke the patent announced orally at the end of the oral proceedings corresponds to the one issued in writing.

EPO T 2175/16 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Oral proceedings before the opposition division took place on 21 June 2016. According to Form 2309.1 of the minutes of those proceedings, the member of the division acting as first examiner during them was S.H.

The same name (S.H.) appears in Form 3301 of the decision of the opposition division.

However, Form 2339, which bears the signatures of the members of the opposition division, is signed by a first examiner with the initials E.D.

3. It is established case law that a signed written decision issued after oral proceedings should be taken by those members of the first instance who conducted the oral proceedings, and no-one else. This principle applies also if the division delivers a decision orally during those proceedings. A change of composition of an opposition division between holding oral proceedings and issuing the written decision should be avoided and, if that is not possible, parties should be offered new oral proceedings (Case Law of the Boards of Appeal, 8th edition 2016, III.K.2.2.2).

4. In the present case, it is not disputed that the person who signed the decision of the opposition division as first examiner had not been the first examiner at the oral proceedings. Thus, a change in the composition of the opposition division took place between holding the oral proceedings, at the end of which a decision was given orally, and issuing the written decision.

5. In line with the findings in T 862/98 (see point 2.3 of the Reasons), this change of composition is considered to be a substantial procedural violation, which justifies that the decision under appeal be set aside, the case remitted to the opposition division and the appeal fee reimbursed (Article 11 RPBA).

6. The respondent argued that the present situation was not comparable with the facts underlying T 862/98, as in that case the division had not announced a final decision at the end of the oral proceedings. A mere change in the composition was not sufficient to constitute a procedural violation, which required such change to lead to a different outcome of the proceedings. In the present case, the decision had been taken before any change in the division occurred, and thus the proceedings' outcome did not change.

Although the decision to revoke the patent announced orally at the end of the oral proceedings corresponds to the one issued in writting, there is no guarantee that the reasoning leading to that conclusion, which is the basis for any appeal by an adversely affected party, accurately reflects the point of view of all three members who had taken part in the oral proceedings. For this reason, whether or not a decision was announced at the end of the oral proceedings or whether or not it was the same as the one issued in writing is irrelevant, as the procedural error affects the decision's reasoning, upon which any subsequent appeal necessarily hinges.

7. The respondent, relying on decision T 4/00, argued that the procedural violation was not substantial: the appellant needed to file an appeal in any case. However, T 4/00 dealt with a situation in which the formalities officer refused a request for correction of the minutes; the correctness of the minutes did not affect the reasoning of the written decision, and the procedural violation was for that reason not substantial. In the present case, however, the procedural violation affects the validity of the reasoning of the decision under appeal. This argument is thus rejected.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The appeal fee is refunded.