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

T 2348/19 - Decision lacking a signature

 Key points

• The decision of the OD was signed by the first and second member and the first member also signed for the chair, i.e. the chair did not sign the decision.
• The Board, in the headnote: “If a member of the department of first instance, who participated in the oral proceedings before that department, is unable to act at the time the reasoned decision is to be issued, for example due to death or a longer lasting illness, one of the other members may sign on behalf of the incapacitated member. However, in such a situation, a written explanation as to why one member is signing on behalf of another must be provided. In the absence of such an explanation, the contravention of Rule 113(1) EPC constitutes a substantial procedural violation”
• “The fact that the chair did not sign the decision, i.e. that the decision is tainted with a substantial procedural deficiency, does not render that decision "null and void" in the sense that it never had any legal effect, contrary to the conclusions drawn in T 390/86 (cf. point 8 of the Reasons). Rather, a reasoned decision affected by such a substantial procedural violation ceases to have a legal effect only if set aside by the competent Board of Appeal (T 2076/11, point 5 of the Reasons; see also J 8/18, point 2 of the Reasons).”
• The case is remitted back to the OD.

T 2348/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192348eu1

Reasons for the Decision

1. Signatures on the reasoned decision and the minutes

1.1 Pursuant to Rule 113(1) EPC, any decision from the European Patent Office must be signed by, and state the name of, the employee responsible.

1.2 The board endorses the established view that this requirement is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. The requirement laid down in Rule 113(1) EPC is aimed at preventing arbitrariness and abuse and at ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law. According to settled case law, a violation of the requirement under Rule 113(1) EPC amounts to a substantial procedural violation (cf. J 16/17, points 2.2 and 2.3 of the Reasons; T 2076/11, point 1 of the Reasons; T 989/19, point 3 of the Reasons). Moreover, a Board may address such a substantial procedural violation of its own motion (cf. T 989/19, point 2 of the Reasons).

{more after the jump break}

J 0016/17 - Anonymous decision and the rule of law

Key points

• In this case, the decision of (the formalities officer of) the examining division rejecting the request for re-establishment, did not contain the name of the person(s) taking it, contravening Rule 113(1) EPC. 
• The Legal Board considers this to be substantial procedural violation, and the requirement to be not a mere formality.
• " The requirement [that] decisions [must] state the name of the employee responsible, is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. This requirement is aimed at preventing arbitrariness and abuse and ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law. " 
• " It was not sufficient either that at the bottom of the decision it was at least stated that it stemmed from the "Examining Division": Rule 113(1) EPC expressly requires the name of "the employee responsible" and not of the "department responsible". Furthermore, stating only the department responsible would also not fulfil the purpose of the requirement to state the person's name, i.e. to identify the person responsible and at the same time to verify whether the person was also competent to take the decision. This becomes particularly apparent in the present case in which the competence to take the decision on requests under Article 122 and Rule 136 EPC was entrusted to formalities officers under Rule 11(3) EPC in conjunction with Article 1 No. 11 and Article 3 of the decision of the President of the EPO, OJ EPO 2014, A6. Indeed, in the present case it is unclear who took the decision under appeal, i.e. the examiners of the examining division or the formalities officer on behalf of the examining division." 
• The RE request is rejected as inadmissible, because the omitted act (payment of the renewal fee) was effect too late (and weeks after the written RE request). The professional representative explained that: "the appellant submitted had made an error of law in that he had paid the missing fees only on 15 March 2017 on the assumption, by analogy with the corresponding provisions for annuities in his national (Albanian) legislation, that the relevant time limit would actually end on the last day of the month in which the payment fell due, i.e. on the last day of March 2017. " 

EPO J 0016/17 - J16/17 - link



EPO Headnote
The requirement laid down in Rule 113(1) EPC, according to which decisions from the European Patent Office must be signed by and state the name of the employee responsible, is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. This requirement is aimed at preventing arbitrariness and abuse and ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law. As a consequence, a violation of the requirement pursuant to Rule 113(1) EPC amounts to a substantial procedural violation and renders the decision erroneous (Reasons, point 2.3).

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. Form of the decision under appeal - Rule 113 EPC

2.1 Apart from the subject of re-establishment of his rights, the appellant did not invoke any further deficiencies in connection with the impugned decision. However, according to Article 114(1) EPC the EPO "shall examine the facts of its own motion" and "shall not be restricted in this examination to the ... arguments provided by the parties and the relief sought". Hence, the boards may verify ex officio whether or not procedural violations have occurred in first-instance proceedings, particularly when inalienable rights constituting an embodiment of the rule of law are concerned, as is the case here (see point 2.3 below).