T 1349/10 - Back To Square One

The present decision deals with appeals against the maintenance of the opposed patent by the Opposition Division (OD). 

The decision was signed, inter alia, by Mr M. as Chairman of the OD. Mr M. had also signed the decision of the Examining Division (ED) to grant the patent (as second examiner).

Both the patent proprietor and the opponent filed appeals.

The Board of appeal observed that the composition of the OD did not satisfy the requirements of A 19(2) since one of the members of the ED which granted the patent-in-suit was also the Chairman of the OD. 

[2] Under A 9(2) (sic), “[a]n OD shall consist of three technically qualified examiners, at least two of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not be the Chairman.” (emphasis added)

[3] In the present case, the Chairman of the OD had taken part in the proceedings for the grant of the opposed patent when he signed Form 2035.4 (dated 14 December 2006) which established the text of the patent to be granted. For this reason, the composition of the OD violated A 19(2), second sentence. 

[4] Violations of A 19(2) are considered to be substantial procedural violations which led to a remittal of the case under A 111(1) and to the reimbursement of the appeal fee in several cases (see decisions T 251/88, T 939/91, T 382/92, T 476/95, T 838/02).

[5] The Board is aware that in two of the cases mentioned above (T 251/88 and T 838/02), the boards asked the appellant or all parties whether they invoked the procedural violation before they decided on the remittal. In both cases, the patent had been revoked by the OD. In the judgment of this Board, violations of A 19(2) should lead to a remittal regardless of the parties’ position at least in situations where third parties are affected by the outcome of the defective first instance proceedings, like in the present case where the patent was maintained in the opposition proceedings. 

[6] The decision under appeal therefore has to be set aside and the case has to be remitted to the department of first instance.

[7] The requests of Appellant 1 with regard to the location of possible oral proceedings (OPs) before the OD after remittal of the case and the auxiliary request of Appellant 2 for OPs relate to issues that have to be decided by the OD and should therefore be addressed to the OD.

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