When filing an appeal after its application had been rejected, the applicant did not know that the Board of appeal would find a formal reason for invalidating the rejection, based on the fact that the decision was not signed by all three examiners. As a matter of fact, one of the examiners was on sick leave, which prompted his director to sign on his behalf.
A 18 EPC provides that the Examining Divisions (ED) shall be responsible for the examination of EP applications and that an ED shall consist of three technically qualified examiners (with the exception of the case where the nature of the decision requires the ED to be enlarged by the addition of a legally qualified examiner). Moreover, the voting procedure referred to in the last sentence of A 18(2) clearly implies that the decision on the application rests on the individual vote of the examiners designated to form the ED in charge of the application.
It follows from these provisions and from the principle “delegatus non potest delegare” that the power to examine a patent application and to decide on it according to A 96 and A 97 EPC 1973 has to be exercised personally by the examiners in charge of the application (cf. T 999/93 [3] and, for an Opposition Division, T 390/86 [7]).
Not only has this power to be exercised personally but it also has to be exercised in this way with the full knowledge of the applicant and the public. As a consequence, in a written decision of rejection at the end of purely written proceedings, i.e. a decision that has not been announced in oral proceedings (OPs) in the presence of all the members of the ED, the applicant and the public have to be capable of verifying that the decision has been made by the examiners designated to form the ED in charge of the application.
Accordingly, R 70(1) EPC 1973 provides that any decision, communication and notice from the EPO is to be signed by and to state the name of the employee responsible. R 70(2), however, allows for one exception to the requirement of a signature by providing that where the documents mentioned in paragraph 1 are produced by the employee responsible using a computer, a seal may replace the signature. [2]
To the knowledge of the Board, according to the practice of the EPO at the date of the impugned decision, all the members of the ED had to sign form 2048 in case of a rejection of a patent application. […] This form was not sent to the applicant but it could be freely consulted by file inspection on the EPO web site. The grounds of the decision are exposed on form 2916 bearing the seal of the EPO in accordance with R 70(2), which was sent to the applicant. [3]
[…] At no point of time the director of the administrative unit to which the examiners belonged has been part of the composition of the ED as it appeared in the data bases of the EPO, was communicated to the applicant and had been disclosed to the public. Nor is there any conclusive evidence that the director had decided to designate himself as second examiner of the division and that this change had not been registered in the date bases of the EPO, for an unknown reason. As a matter of fact, the director had the power to modify the composition of the ED formed by examiners of his unit and to designate himself second member of the DE, as he was also qualified to act as an examiner. But the circumstances indicate that he has not chosen to exercise this power in the present case. The inscription “i.V.” (meaning “in Vertretung”, i.e. “p.p.”) on form 2048, the absence of the director’s name on the other forms and the explanations of the director all indicate that he has signed form 2048 in place of the missing member of the ED. […] Therefore the Board concludes that the director was not part of the ED and could not exercise the powers conferred to the members of the ED. [4]
The question remains whether the director nevertheless had the power to sign the decision in replacement of the second examiner who was not capable of signing himself.
In case T 1170/05 [2.3-5] the Board has considered that in the exceptional situation where a member of an ED is unable (here owing to death) to sign the decision after it has been announced at the end of OPs, it should be accepted that the written decision be signed by the president of the ED in the name of the missing member, provided that the reasons for the decision reflect the point of view adopted by the ED as a whole when deliberating at the end of the OPs. Two different Boards have expressed similar opinions in cases T 390/86 [7] and T 243/87 [4].
In each of these cases, the decision had been taken in OPs in the presence of all the members of the ED. Therefore the critical question was not whether the decision of rejection had been taken by the ED as a whole but only if the reasons for the decision could be considered to reflect the point of view of all the members of the ED.
In the present case the situation is quite different because there were no OPs and, therefore, no decision announced at OPs in the presence of all members of the ED. According to form 2048, the impugned decision was taken in the absence of the second examiner. In contrast to the above cited decisions, it cannot be established that the decision of rejection was taken by the three members forming the ED. The signature of the director in place of the second examiner has no legal value in this respect because there is no provision in the EPC allowing a director to sign in the name of a member of an ED of which he is not a member. Such an authorisation is not implicit in the function of a director as superior of the examiner. As already stated above, the last sentence of A 18(2) implies that the decision on the application rests on the individual vote of the examiners designated to form a given ED. Moreover, the signature of the director could not be considered as a guarantee that the second examiner has fully participated in the decision process and that the reasons for the decision reflect the result of the deliberations of the duly composed ED. [5]
The Board concludes that the impugned decision, having been taken by an ED that was incomplete with respect to its official composition, is not valid and has to be cancelled. [6]
The Board observers that it would have been sufficient to wait for the recovery of the second examiner, or to replace him officially as member of the ED and then to take the decision in the modified composition, taking care that the names of the members having taken in the decision appear in the internal data bases of the EPO and on form 2007 bearing the official seal of the EPO. [7]
NB : This decision has also been discussed here (in French).
To read the whole decision (in French), click here.
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