T 0466/20 - Change OD composition in the course of oral proceedings

 Key points

•  This is an unusual case. 
• The OD held first oral proceedings:  "After [the Chair] had informed the parties of the opposition division's conclusions regarding the claims of Auxiliary Request 3 and the requirements of novelty and inventive step, the parties agreed to continue in writing for the adaptation of the description. Then the chairman "announced the decision that the claims of AR3 met the requirements of the EPC.""
• Second oral proceedings are held for the adaption of the description.
• "after discussion of the patent proprietor's multiple requests for adaptation of the description filed on 4 October 2019, the opposition division twice gave the patent proprietor the opportunity to file a further request for adaptation of the description to overcome the objections raised up to then. Thereupon, both opponents objected "to the Opposition Division as a whole as being biased/suspect of partiality in favor of the Patentee". Oral proceedings were then adjourned from 6 to 9 December.
• "The second oral proceedings were resumed on 9 December 2019 at 13.30 hrs before the opposition division in a three-member composition with the same first and second examiners as before and a new chairman in place of the former chairman. The new chairman announced the decision of the Director in charge that the objection against the former chairman's impartiality was not justified. He also informed the parties that, however, the statements made by the representatives of the opponents in the context of the request gave rise to the concern of inducing possible bias of the former chairman when continuing the proceedings, and that therefore the Director had decided, and the former chairman had voluntarily agreed, that the former chairman be replaced by the new chairman."'
• The written decision is signed by the two members of the OD and the new Chair of the OD.
• The Board, after an extensive analysis, finds this a substantial procedural violation and sets aside the (entire) decision of the OD.
• "It clearly follows from Article 19 EPC that the power to examine and decide on oppositions to a European patent must always be exercised personally by the examiners appointed for that purpose, and it is clear from the provisions of Articles 113(1) and 116 EPC that this personal exercising of said power must be apparent to the parties and the public []. It is established case law that a written reasoned decision pursuant to Rule 111(1), second sentence, and (2) EPC issued after oral proceedings should be the decision written on behalf of, and represent the views of, those members of the opposition division who conducted the oral proceedings and who gave the decision orally at those oral proceedings pursuant to Rule 111(1), first sentence, EPC, and no others []. Therefore, such a written decision must be signed by the members of the opposition division who were involved in reaching the decision pronounced orally, and only by them []. "
• "a change of composition of an opposition division between the oral proceedings and the issuing of a written decision should be avoided and, if that is not possible, parties should be offered new oral proceedings in the event of a change (T 900/02 [r.3])".
• "It is mainly in dispute between the parties in the case at hand whether, in the first oral proceedings on 4 March 2019, interlocutory decisions were announced by the opposition division in the former composition which were binding on the new chairman" (or only conclusions).
•  "the patent proprietor referred to decisions G 12/91, OJ EPO 1994, 285, point 2, second and third sentences, of the Reasons, and T 577/11, point 3.1, second paragraph, of the Reasons. In the cited passage of decision G 12/91, the Enlarged Board of Appeal held that a decision given orally becomes effective and binding by virtue of being pronounced. In the cited passage of decision T 577/11, the board of appeal confirmed this for interlocutory decisions announced in the course of oral proceedings on a specific point and found that such a decision excluded any re-opening of the debate. These findings are not called into question by the board. "
• The Board, for the sake of argument, assumes that an interlocutory decision was given. " the written reasoned decision confirming this orally-announced interlocutory decision must be issued on behalf of the very same members of the opposition division who were present at the first oral proceedings, as the task of giving a written reasoned decision is personal to those members of the opposition division present at the oral proceedings and cannot be delegated to a differently-composed opposition division, even if two of the members remain the same"
• "The board agrees with the view taken in decision T 42/02 (point 9 of the Reasons) that, if an opposition division feels it necessary to orally announce binding interlocutory decisions, the correct procedure under such circumstances would be to issue a written interlocutory decision (not allowing separate appeal pursuant to Article 106(3) EPC) dealing with the issues decided at the first oral proceedings followed by a final decision dealing with the remaining issues, each decision being properly signed by only the three examiners concerned. "
• The Board appears to distinguish the present case from  T 0699/99 where the legal member retired between the first and second oral proceedings and was replaced. An interlocutory decision had been given by the Board in the first oral proceedings.
• The Board also deals with the case that only conclusions were given by the OD during the first oral proceedings (since the minutes are unclear). A substantial procedural violation occurred as well in that case because then the only decision was taken by the new Chair who had not heard the relevant remarks of the parties. "Thus, all findings at the oral proceedings which are relevant to the final decision should be made in the presence and with the involvement of the members giving the final decision, even in cases where no oral interlocutory decision is pronounced. The written reasons must also not be influenced by the views of a new member which were neither formed on the occasion of the respective oral proceedings nor communicated to the parties on this occasion (see decision T 42/02, point 8 of the Reasons). The written decision should therefore be in the name of and signed by those members of the opposition division who conducted the oral proceedings and heard the parties at those oral proceedings on the issues on which a decision was pronounced at the same oral proceedings or [...]at later oral proceedings. Changes in the composition of an opposition division after oral proceedings should therefore be avoided even in cases where no interlocutory decision has been given orally, and if that is not possible parties should in general be offered new oral proceedings in the event of a change (see also T 862/98, point 2.3.2 of the Reasons)."

T 0466/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200466eu1.html