R 16/10 – He Once Was One of Us

This petition for review concerns decision T 699/07 (also mentioned in a previous post).

It was based on two alleged deficiencies:

1. that the Board had misinterpreted the patent proprietor’s submissions, and
2. that a Board member was partial within the meaning of A 24: As a matter of fact, the chairman of Board 3.3.01 was employed from January 1986 to January 1991 as a patent specialist by Rhone Poulenc Agrochimie, which is the legal predecessor of the patent proprietor, Bayer CropSciences SA. Exhibits were filed providing evidence of his qualification as a European representative and of his European patent filing activities as representative of Rhone Poulenc Agrochimie.

The Board dismisses the first ground as being equivalent to a request for declaring the Board’s reasoning insufficient or wrong, which is not the aim of review proceedings. It then deals with the second ground:

[2.3] As to the second ground of the petition, according to A 112a(2)(c), the partiality of a member of a Board of Appeal may be a ground for a petition for review insofar as a member took part in the decision in breach of A 24(1), or despite being excluded pursuant to a decision under A 24(4).

[2.3.1] The petitioner submits that the wording of A 24(1):

“Members of the Boards of Appeal or the Enlarged Board may not take part in a case in which they have any personal interest, or if they have previously been involved as representatives of one of the parties, or if they participated in the decision under appeal.”

includes not only the specific situation where one of the members has represented a party in the case in question but also the general situation where a member has previously acted as representative of that party in any matter.

[2.3.2] However the petitioner’s interpretation of this article does not match that of a normal reader reading it in its proper context.

There was only a slight amendment of the English text in EPC 2000 by which the words “may not take part in any appeal if they have any persona1 interest therein” were replaced by “may not take part in a case in which they have any persona1 interest”. This amendment shows that the previous English wording was not completely satisfactory compared to that of the other two languages, which were not amended.

While the amended English text remains less clear than that of the other two versions, when paragraph 1 is read as a whole, it becomes unambiguously clear that it deals with three separate cases each governed by the words “in a case in which”.

Moreover the reference to “previously been involved” is such that the “involvement” is immediately understood by the reader as referring to the “case in which” and no other case.

[2.3.3] Further, this paragraph cannot be given a different meaning in English to that in the two other languages.

It is clearly stated in the German and French versions (“in der sie vorher als Vertreter eines Beteiligten tätig gewesen sind”; “s’ils y sont personnellement intervenus en qualité de- représentant de l’une des parties” [emphasis added by the Enlarged Board]) that the cause of exclusion relates to the involvement in the particular case in question and not to any past representation.

[2.3.4] Accordingly, the meaning of the English text of A 24(1) EPC taken as a whole, in its proper context and with respect to the text of the other two languages, is clear. No further investigation as to the intention of the legislators is necessary.

However, the Enlarged Board notes that A 24(1) EPC quickly met with the approbation of al1 the contracting States in the wording of EPC 1973, the travaux préparatoires showing that the authors were concerned with a similar rule as the then existing A 16 (now Article 18) of the protocol of the statutes of the Community Court of Justice (document IV/8221/61-F).

[2.3.5] As the petitioner made clear during the oral proceedings that it did not intend to base its petition on the second ground provided by A 24(1) it results from the above paragraphs that the composition of the Board complied with Article 24(1).

[3] The upshot is that the petition based on the alleged breach of A 24 (1) is also clearly unallowable.

Should you wish to download the whole decision or have a look at the file wrapper, just click here.

NB : This decision is also discussed on Le blog du droit européen des brevets.